Comic Enterprises Ltd v Twentieth Century Fox Film Corporation

Comic Enterprises Ltd v Twentieth Century Fox Film Corporation

Fox's use of 'glee' as the name for its TV series infringed CEL's registered trade mark under s.10(2)(b) and s.10(3) of the Trade Mark Act 1994 due to similarity of marks and services, likelihood of confusion, and detriment to the mark's distinctive character and repute. Evidence of actual confusion and change in economic behaviour supported the finding. The passing off claim failed as there was insufficient actionable misrepresentation.

Parties
Claimant/respondent: Comic Enterprises Ltd; Defendant/appellant: Twentieth Century Fox Film Corporation
Jurisdiction
England and Wales
Judgment Date
08 February 2016
Procedural Posture
Civil Appeal / Judgment on Appeal and Cross Appeal
Outcome
Appeal dismissed; cross-appeal dismissed.
Legal Topics
Trademark Infringement, Passing Off, Trade Mark Act 1994, EU Directive 2008/95/ec, Series Marks, Likelihood of Confusion, Reputation and Distinctiveness, Due Cause
Intellectual Property Trademark Law Trademark Infringement Passing Off Trade Mark Act 1994 EU Directive 2008/95/ec Series Marks Likelihood of Confusion +2 more

Case Brief

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Parties

Comic Enterprises Ltd

Claimant/respondent

Twentieth Century Fox Film Corporation

Defendant/appellant

Procedural Posture

Civil Appeal / Judgment on Appeal and Cross Appeal

Legal Issues

  1. 1 Whether Fox infringed CEL's registered trade mark under s.10(2)(b) and s.10(3) of the Trade Mark Act 1994
  2. 2 Whether Fox was guilty of passing off
  3. 3 Whether series marks are compatible with EU law

Ratio Decidendi

Fox's use of 'glee' as the name for its TV series infringed CEL's registered trade mark under s.10(2)(b) and s.10(3) of the Trade Mark Act 1994 due to similarity of marks and services, likelihood of confusion, and detriment to the mark's distinctive character and repute. Evidence of actual confusion and change in economic behaviour supported the finding. The passing off claim failed as there was insufficient actionable misrepresentation.

Court Disposition

Appeal dismissed; cross-appeal dismissed.

Orders

  • Fox found to have infringed CEL's registered trade mark under s.10(2)(b) and s.10(3) of the Trade Mark Act 1994.
  • Passing off claim dismissed.