Trade mark infringement proceedings under section 10 of the Trade Marks Act which require a likelihood of confusion between a registered trade mark and a later sign almost always turn on the later sign having been perceived as somehow related to the earlier trade mark. A relatively recent development which has been raised in proceedings is the concept of “wrong way round” confusion, where the relevant public believe that the earlier mark is somehow related to the later sign and not vice versa.
Instances of wrong way round confusion tend to arise where the reputation of the later sign is greater than that of the earlier trade mark. This may occur because the sign is given greater exposure to the relevant public than trade mark by its owner. Indeed, there is no requirement under the Trade Marks Act 1994 for a registered trade mark owner to expend such time and money on its mark so as to reach the widest audience possible; the requirement is only that the mark be put to genuine use. A trade mark owner may therefore seek to restrain the later use of the sign in question, notwithstanding its greater exposure to the public. The question arises as to whether wrong way round confusion is sufficient to constitute a likelihood of confusion in infringement proceedings under section 10.
Trade mark infringement
This question was considered by Mr Roger Wyand QC, sitting as a Deputy High Court Judge in the case of Comic Enterprises Limited v Twentieth Century Fox Film Corporation  EWHC 185 (Ch). In this case, the claimant was the owner of a string of entertainment venues branded as “The Glee Club” and registered its trade mark in 1999. The defendant is a media mogul whose TV series “glee” has attracted millions of viewers around the world since it premiered in 2009. The claimant took issue with the defendant’s use of the word “glee” and commenced proceedings for trade mark infringement under section 10 and passing off.
Evidence suggested that most members of the public came to associate the earlier mark with the later sign and not vice versa, hence the so-called wrong way round confusion. Mr Wyand QC concluded that the evidence suggested there was a likelihood of confusion and stated: “It is not necessary for infringement of a registered trade mark to show that there is ‘right way round confusion’. All that is required is a likelihood of confusion.”
The tort of passing off requires a claimant to demonstrate goodwill , misrepresentation by the defendant and damage to the claimant’s goodwill. Mr Wyand QC, having considered these elements against the facts before him, concluded that there was very little evidence of misrepresentation and that any confusion was unlikely to cause damage to the claimant. He elaborated that “The damage suffered by the Claimant is caused by its venues being confused with the Defendant’s TV show and its potential customers being put off. That is not passing off.”