Remember when you could rely on social media for fair, unbiased and objective coverage of the news? Me neither.
The facts did not get in the way of a good story when a virtual Twitter-storm erupted over the weekend around the tv show GLEE having to change its name in the UK.
But is this a foregone conclusion? No. It isn’t. Not by a long shot. [New Directions could here launch into their version of Eminem’s “One Shot”, or Europe’s “Final Countdown”…]
What has happened so far?
We wrote earlier about the first instance decision on the substance (here), in which it was held that the use of GLEE by Fox infringed CEL’s trade mark registration for its series of stylised THE GLEE CLUB marks.
We now have a decision concentrating on the form of order, and confirming that permission has been granted to appeal.
The Judge has (among other things):
– indicated that he would grant an injunction preventing the use of GLEE, but that this should allow a reference to the fact “that the programme was previously known as “Glee”” (very Prince-esque); and
– held that a publication order is appropriate (including because “[i]t is important that the viewers of the show should have their attention drawn to the judgment”).
However, the injunction is stayed while the appeal takes place. The publicity order is not (it will be interesting to see what this looks like).
As foreshadowed above, the Judge has given permission to appeal his decision. This is fairly unusual (the usual course is that the trial Judge refuses permission and so permission must be sought from the Court of Appeal). In doing so, the Judge said: “I have granted permission to appeal on the basis that there is a real prospect of success. that is not to say, of course, that I believe that my decision was wrong, but accept that this case is unusual and involves difficult points of law”.
There are some really curly questions in the appeal. Taking our cues from our Millenial friends, we limit ourselves here to dealing with probably the coolest issue, namely the relevance of reverse or “wrong way round” confusion. That is, the Judge took into account evidence of confusion that was caused by the fame of the tv show GLEE, such that people seeing The Glee Club connected the two brands. But should this be a relevant consideration?
First – as the relevant date in the proceedings was December 2009, there is an issue as to whether the immense fame now enjoyed by GLEE even existed at that time.
Second – if fame is relevant, then why? The Judge thought that this fame was relevant because “[i]t is when the sign has been used on a substantial scale that one will get evidence of the likely reaction of the public. If the Defendant has been using its sign on a large scale for a couple of years and there is no evidence of confusion, I am sure that the Defendant would be relying heavily on that lack of confusion”. However –
The assessment of the likelihood of confusion is fact-specific. Reading in a “substantial scale” of use of the earlier mark is difficult to reconcile with this. Instead, only normal and fair use should accrue in the registered mark (absent enhanced distinctiveness acquired through use).
Two decisions from the CJEU have considered the relevance of the fame (or alleged fame) of the later mark in assessing the likelihood of confusion. In brief, one authority (Aceites – relating to a dispute over olive oil labels) suggests that the reputation of the later mark is irrelevant to the assessment of the likelihood of confusion (a practice routinely followed by the Opposition Division and the Boards of Appeal, and enshrined in OHIM’s Manual), and the other (Becker) suggests that the perception of the later mark may obviously be influenced where the mark (in that case, the name of the celebrity Barbara Becker) is well known. Each decision arguably points away from a finding that GLEE would be confused with the earlier mark.
So we must wait now for the next chapter. In the meantime, to quote the eerily prophetic words of Quinn – “Sometimes people have to deal with a little adversity. I learned that at glee club”.