Pushing the boundaries of trade mark law (Part 1) – The Glee Club v Glee and “wrong way around” confusion

Well, fans of hit TV show GLEE will be rocked by the recent decision from Roger Wyand QC (sitting as Deputy Judge of the UK High Court) finding that the use of GLEE infringed a trade mark registration owned by Comic Enterprises Limited (CEL), for a series of two marks consisting of THE GLEE CLUB in a stylised form (one of which is shown below):

As news of the decision broke, it was understood that Fox would appeal. Any further decision is eagerly awaited, as the case raises incredibly important issues around the scope of a mark registered in a stylised form (where some or [some would say] all of its distinctive character stems from that stylisation) and “wrong way round” or reverse confusion.

Our London team have recently discussed this decision (and also the Kit Kat shape mark and Greek Yoghurt decisions) here.

Playing the devil’s advocate for a minute, the decision could be seen as troubling in that the owner of a highly stylised mark containing the words THE GLEE CLUB has been given broad rights to prevent the use of GLEE in circumstances where:

• the evidence showed others made or were making – admittedly low-scale – descriptive use of the term as at the filing date;

• an application to register the word mark THE GLEE CLUB in the UK or EU for entertainment services would likely face absolute grounds issues (no such registration exists) [the heavy stylisation perhaps takes CEL’s mark outside of the category of marks with “needlepoint” or “eggshell” distinctive character discussed by Arnold J in Starbucks (HK) Ltd & Ors v British Sky Broadcasting Group Plc & Ors [2012] EWHC 3074 (Ch)];

• Fox’s use of GLEE does not incorporate the stylised elements that are present in CEL’s registered mark;

• as at the date of the first alleged infringement in 2009, some consumers would have known the meaning of THE GLEE CLUB and the rest would likely have understood very quickly on hearing the term and seeing it in context that it was a descriptor for singing groups at high schools and universities in the United States (albeit that the term appears to have originated in the UK);

• CEL’s registrations were restricted in scope based on lack of genuine use, such that the respective services were not identical.

Perhaps the key point is that much of the decision concentrates on instances of confusion caused by the great fame that Fox had in its TV show under the GLEE name, rather than any confusion stemming from the mark in the registered form as owned by CEL. This represents a subtle but very important difference.

The decision also has an interesting discussion of the scope of series mark registrations, and the paring back of a specification for partial non-use, and reiterates the important point that a

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CTM registration does not provide a trade mark infringement defence.

So, having said all that, how would this play out in Australia?

Reverse confusion – Thorpedo might have something to say about that

Reverse confusion was expressly dealt with in the opposition context by Bennett J in Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited [2003] FCA 901 (27 August 2003).

In that case, Thorpedo Enterprises (the corporate vehicle of the well known swimmer Ian “Thorpedo” Thorpe) filed for THORPEDO in respect of various goods and services, including class 25. That application was opposed by Torpedoes based on PARADISE TORPEDOES LEGENDS and the TORPEDOES logo below (that registration has now fallen away, as it was not renewed).

The question inevitably arose as to what relevance the fame in THORPEDO had on the question of deceptive similarity.

Under the section 60 ground of opposition of the TMA, the answer was simple. That provision is clearly “directional” in that (referring to the old language of that section) the mark applied for must be deceptively similar to an earlier mark with a reputation in Australia, with a likelihood of confusion due to that reputation. Each party in the case accepted this conclusion. Given that any confusion was said to arise from the fame that Ian Thorpe had in THORPEDO, section 60 did

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not assist the opponent.

Under the section 44 ground, however, the answer was not so clear. Bennett J referred to the language of section 44, which indicated that a directional approach might apply: “an application for the registration of a trade mark … must be rejected if the applicant’s mark is … deceptively similar to a trade mark registered by another person” (emphasis added). Further factors in favour of a directional approach were considered, including that section 43 (which prohibits the registration of a mark if it consists of or contains a connotation that is likely to cause confusion) is not directional (which supported the view that s44 is), and the combined effect of the language in sections 44 and 10 which provide that (as relevant to this case) “the registration of the THORPEDO mark must be rejected if the THORPEDO mark is substantially identical with the Sportswear marks or if it so nearly resembles the Sportswear marks that it is likely to deceive or cause confusion”.

Bennett J concluded that if there was confusion caused by the reputation of the later mark, then that did not fall within the scope of section 44. In fact, in the particular case, the reputation in the THORPEDO mark indicated that consumers would be less likely to be confused (and there was no evidence of actual confusion).

Given that a brand in this day and age can literally achieve fame overnight, it is only a matter of time before we see whether and how reverse confusion factors into the infringement tests in section 120.

For the time being, it is possible that a similar fact scenario to the GLEE case may lead to a different result in Australia.

So maybe we have it the right way around down-under … ?