The English Court of Appeal handed its decision down earlier this week and it sided with London based Glee Club.
In 2011 the owner of The Glee Club- Mark Tughan initiated legal proceedings against the hit US musical comedy show. The case cantered on two trade marks that showed the company’s logo and the words ‘The Glee Club’. He said the comedy club’s trade mark was registered in 1999, and therefore in use for more than a decade before the US show first aired, and claimed that customers were put off attending his clubs as they thought the clubs were associated with the TV show. Tughan argued; “The similarity of the names and branding in the same field of entertainment services has led to us losing custom and hampered our ability to establish our brand of cutting edge live comedy.”
In 2014 the British comedy business secured a victory after a high court ruled that the US television show had infringed its trade marks with its broadcast of the show in the UK. The judge rejected claims of passing off and ruled that in law there had been no misrepresentation. Deputy High Court Judge Roger Wyand confirmed that the order for Fox to rename its show would only come into effect once the Court of Appeal confirmed his judgment.
Fox subsequently appealed the decision but lost on Monday as the decision handed down by the English High Court in 2014 was upheld. Lord Justice Kitchen found that “there exists a likelihood of confusion.”
The owners of The Glee Club- Comic Enterprises argued that the TV show had infringed its trade marks by broadcasting its episodes, spin –of songs, DVD’s and other merchandise marketed in the UK. A claim of passing off was also made but this was rejected by both courts.
Speaking to BBC News after the victory, Mr Tughan expressed his relief and commented “I feel vindicated, not only for taking the case in the first place but now that two courts have come to the same conclusion about infringement on my trade mark.” He further commented “It has been going on for years and it really is a David versus Goliath situation, I cannot tell you how much it means to us. But the great thing about this is, it proves that little companies can stand up for their rights.”
Following the ruling Fox issued a statement saying that it “notes the Court of Appeal’s decision and welcomes its consideration of the outstanding issues.” A spokesperson further commented; “We remain committed to proving the merits of our case and to delivering Glee to all of its fans in the UK.”
Although there will be no new series of the show, the ruling would affect repeats, future performances of the spin-off stage show as well as DVD, CD sales and digital downloads through the show.
But, the fight is not over, it has already has been confirmed by Fox’s lawyers that the company will continue to appeal the decision and against “the catastrophic consequence” involved with the rebranding of Glee. The case is still ongoing and the next stage may be referral to the European Court for another judgment. It is expected that a decision will be reached in the next few months.
Fox has already been ordered pay £100,000 on account of damages, this amount could increase and run into the millions.
Fox insists that it had no prior knowledge of Birmingham based ‘The Glee Club’ and have confirmed that it will not be rebranding/renaming Glee until the appeals process has been fully exhausted.