Patent Infringement | "Twentieth Century Fox Sued Over “Glee” Trademark"

By : Chris McDonough 
Source : http://www.ipbrief.net
Category : Patent Infringement

I’m sure that everyone reading has at least heard of the TV show Glee, the high school comedy that debuted in 2009 and has gone on for three seasons, receiving nominations, awards, and favorable critical reception.  Although the series premiered in the US on Fox, it has been syndicated and broadcast in many countries including the United Kingdom.  That international distribution became a problem for Fox when it was sued in the UK for trademark infringement.  The plaintiff, Mark Tughan, owns Comic Enterprises, a company which runs a series of comedy venues in Cardiff, Birmingham, Nottingham and Oxford, sharing the name “Glee Club”.

Mark Tughan claims that although he had known about the show since 2010 (it was first shown in the UK in December 2009), he delayed addressing the problem because he didn’t know that the show would go on to become the widespread and well known phenomenon it is now.  He alleges that there has been actual confusion between the comedy venues and the TV shows; perhaps people assume that the clubs are associated with the show in some way or that they are focused on music instead of comedy.  He is seeking an injunction against Fox which would prevent them from using the name “Glee” in the UK.  Were the injunction to stop the show being broadcast there, it could cost Fox millions of dollars.  The case went to a patent judge, who passed it up to a higher court which will hear the case.

I don’t know the details of UK trademark law and how it differs from US law, but in US, this would be a case of “reverse” confusion, where the party which has used the mark for longer has much less presence and accumulated goodwill than the infringer.  This is called “reverse” confusion because the usual problem addressed by trademark law is when a smaller party “mooches” off a larger, more well-known party by using a similar mark.  The regular confusion factors still apply (strength of the mark, evidence of actual confusion, the similarity of the markets, etc), but the focus is on the conceptual strength of the senior mark (whether it is arbitrary or fanciful) and the commercial strength of the junior mark.  However, the reverse discrimination is somewhat narrowly applied in the US and I don’t know whether it is common in the UK or how it is applied.

Fox is seeking to challenge Comic Enterprise’s ability to trademark “Glee Club” in the first place, which is probably the best option.  They claim that since “Glee Club” is an existing term, the mark has little conceptual strength.  However, Comic Enterprises is not using the mark to refer to actual high school glee clubs, but as a pun with a clearly distinct definition.  That seems to move the mark into the “suggestive” category.   Given the potential cost to Fox versus the benefit to Comic Enterprises, a large settlement would probably be the best solution for both parties.  Let’s face it, while there may be confusion on the part of customers, it’s likely that confusion will only be increasing business for the comedy clubs.

Source : http://www.ipbrief.net/2012/04/01/twentieth-century-fox-sued-over-%E2%80%9Cglee%E2%80%9D-trademark/