A judge in the UK ordered Twentieth Century Fox to change the name of the “Glee” TV show because it infringes the trademark for a chain of British comedy and music venues.
Comic Enterprises Ltd., the operator of “The Glee Club” chain, sought an injunction against the show’s use of the name.
Comic Enterprises has had “The Glee Club” name registered as a trademark in the UK since 1999. Its operator sued Fox in 2011, claiming that British consumers were confused into thinking his clubs were affiliated with the series.
High Court Judge Roger Wyand ruled six months ago that the public was likely to mistakenly associate the name of the TV show with the trademarked name of the clubs.
The judge said that Comic Entertainment was the victim of “wrong way round” confusion – a concept called “reverse confusion” in the US. This concept describes a situation where consumers see a trademark owner’s mark and wrongly associate it with an infringer’s goods or services.
Fox claimed that forcing it to change the show’s name would be an excessive burden – that it would be “catastrophic” and cause “permanent and irreversible damage.”
Judge Wyand disagreed:
I find it hard to believe that the cost of the retitling and publicizing of the new name would be so prohibitive compared to the value of the series… I was told many times during the course of the trial how this series is a ‘blockbuster.’ Although an injunction would be a substantial blow to the defendant, I do not find that it would be disproportionate.
Fox argued that its fans would probably continue to think of the five-year-old series as “Glee” even if the name was changed, and thus that a name change would not benefit Comic Enterprises.
Again, Judge Wyand disagreed. He said that Fox could include disclaimers with the program stating that the show was formerly known as “Glee.”
The order will not go into effect until the Court of Appeal confirms the decision. Fox has been ordered to make an interim payment of £100,000.
Fox said that it will appeal.
This case illustrates the difficulties in trademark protection for US brands when doing business around the world. Consult with an IP attorney for an expert look into the different laws pertaining to trademark registration and protection outside the US.
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Photo Attribution: “Glee Cast” by Gudlyf is licensed under the terms of the cc-by-2.0.