Protecting Your Trademark: UK Judge Orders Glee TV Show to Change Its Name

GLEE TV Show Trademark Infringement in UKA 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.

Please Like us on Facebook and Follow us on Twitter for the most current intellectual property news.


Leech Tishman’s Intellectual Property attorneys are dedicated to the protection and monetization of your ideas and innovations. Many of our registered patent attorneys have advanced degrees enabling them to truly understand the complex technical details of your idea.  Several bring engineering expertise, others molecular biology, manufacturing and business acumen to your trademark, copyright, patent prosecution and litigation and trade secret issues, both domestic and international.

Our clients range from individual inventors, authors and owners of creative works to entrepreneurial enterprises, government entities, mid-sized corporations and Global 500 companies with operations throughout North and Central America, Europe, South Asia, the Far East and Australia.

We have serviced a vast array of industries including automotive, cosmetics, e-commerce, electronics, entertainment, fashion, food and beverage, furniture, internet, manufacturing, networks, optics, publishing, software, technology, toys, and wireless.

We are committed to providing you with strategic counseling and personal attention throughout the entire life cycle of your project.

We are proud of our longstanding relationships with local innovation communities and enjoy working with entrepreneurs and businesses who wish to protect their ideas and good names.

Please contact us today for a free consultation at (855) UR- IDEAS or (626) 796-4000.

Disclaimer: We fully comply with all laws related to attorney marketing and this posting is considered an advertisement.

Photo Attribution: “Glee Cast” by Gudlyf is licensed under the terms of the cc-by-2.0.



3 thoughts on “Protecting Your Trademark: UK Judge Orders Glee TV Show to Change Its Name

Please let us know what you think!

Fill in your details below or click an icon to log in: Logo

You are commenting using your account. Log Out /  Change )

Google+ photo

You are commenting using your Google+ account. Log Out /  Change )

Twitter picture

You are commenting using your Twitter account. Log Out /  Change )

Facebook photo

You are commenting using your Facebook account. Log Out /  Change )


Connecting to %s