‘Glee’ less than happy after trade mark strife (Brands & IP Newsnotes - Issue 2)
28 March 2016
We’re all familiar with the classic trade markdispute. But can you sue for trade markinfringement if the brand using your name is actually more famous than your own? In February, the Court of Appeal said you could.
Close, but no Harmony
‘The Glee Club’ is a network of comedy clubs in Britain which registered a trade mark in 1999. The 20th Century Fox TV series Glee first aired in the UK in 2009. At one point, 2.2m Britons tuned in to follow an Ohio high school singing club and its members’ battles with social stigma. Before long, people assumed that the club and the show were connected. Comedy fans questioned whether they’d enjoy a song-anddance routine and avoided the club, which had difficulty advertising under its own name. The Glee Club took 20th Century Fox to court.
The ‘wrong way round’
The Glee Club argued that Fox had used a similar sign to market a similar service, leading to public confusion between the brands. Fox argued that ‘wrong way round’ confusion’, where consumers confuse the Glee Club and its services with the more famous Glee TV series, shouldn’t count. If it did Fox warned, this would mean a brand too unfamiliar to confuse anyone when it arrived in Britain would be punished for becoming famous enough to confuse, despite trading lawfully in the meantime. In deciding that it didn’t matter which mark consumers encountered first, the Court of Appeal held that Fox had infringed. It follows that a brand can become infringing over time.
The Court’s consideration of the Glee Club’s logo is noteworthy to boot. It held that Fox had infringed the logo even though it had not used the ‘device’ elements of the logo or the entirety of the words incorporated in it. That may give comfort to owners of logo marks about the potential strength of their rights.This article was published in the Brands & IP newsnotes publication - issue 2.
The lesser spotted shape mark (Brands & IP Newsnotes - Issue 2)28 March 2016
A picture says a 1000 words or so the saying goes. So what about a shape? Several recent decisions have underlined the difficulties that can arise in trying to use shapes to protect a brand.
Trading secrets safely in Europe (Brands & IP Newsnotes - Issue 2)28 March 2016
In December 2015, while most of us were busy wrapping presents and eating mince pies, the representatives of the European Parliament and Council agreed the text of the Trade Secrets Directive.
Stop monkeying around (Brands & IP Newsnotes - Issue 2)28 March 2016
A judge in California has put a stop to all the monkey business surrounding the idea that animals can own copyright, in California at least.
Play those bars again and end up behind… bars (Brands & IP Newsnotes - Issue 2)28 March 2016
The High Court has handed down a custodial sentence of 28 days for breach of an injunction against copyright infringement, albeit suspended for a period of 18 months. Two points rang out.
To register or not to register… that is the question (Brands & IP Newsnotes - Issue 2)28 March 2016
Just because you can register your intellectual property, it doesn’t mean that you should. Sometimes attempts to register can have unintended consequences, as YouTube stars, the Fine Brothers, recently found out.
Kylie v Kylie (Brands & IP Newsnotes - Issue 2)28 March 2016
It isn’t often that trade mark oppositions receive mainstream media attention. Kylie Minogue has bucked that trend by filing an opposition to reality TV star Kylie Jenner’s trade mark application for ‘Kylie’ in the US.
But we settled that! (Brands & IP Newsnotes - Issue 2)28 March 2016
Parties will understandably often be relieved to sign on the dotted line of that “full and final” settlement agreement. But two decisions of the High Court earlier this year may give pause for thought. What is the practical effect of such a settlement and is it really what the parties want?