The Court of Appeal handed down judgment this morning following a further appeal hearing in Comic Enterprises v Twentieth Century Fox.
Comic Enterprises operates a number of entertainment venues in the UK including stand-up comedy acts and nightclubs. It is the owner of a UK trade mark for a series of two trade marks for the words ‘the glee club’. Twentieth Century Fox is a well-known US entertainment company which among other things produces a musical comedy television series called ‘glee&rsqursquo; about a high school singing club at the fictional William McKinley High School in Ohio. Some 2.2m people in the UK watched the second series of ‘glee’.
At first instance it was held that use of the word glee by Fox infringed Comic Enterprises’ trade marks. The appeal was heard last year and in February the Court of Appeal dismissed Fox’s appeal save for the question of whether the UK’s ‘home grown’ regime for series trade marks was compatible with the requirements of the Trade Marks Directive. That issue was heard in April and, given the general public importance of the point, the Comptroller was invited by the Court of Appeal to make submissions as a non-party in response to Fox’s arguments that the UK regime was incompatible with the directive.
In the judgment today, Kitchin LJ (with whom Arden LJ and Lloyd Jones LJ agreed) has rejected Fox’s appeal and accepted the Comptroller’s submission that a registration to a series of trade marks is to a bundle of individual trade marks registered under a single number. He therefore held that no issue of incompatibility arises. Kitchin LJ also considered the previous case law on series of trade marks and held that the approach adopted by Mr Richard Arnold QC (as he then was) and in a number of subsequent decisions (including below in this case and by Birss J in Thomas Pink v Victoria’s Secret) presents real problems. The Court refused Fox’s invitation to refer a number of questions to the CJEU on the question of compatibility.
The judgment is here.
Nicholas Saunders is standing counsel for the Comptroller and was instructed by the Treasury Solicitor.