Case details

Twentieth Century Fox Film Corporation (Appellant) v Comic Enterprises Ltd (Respondent)

Case ID: UKSC 2016/0135

Case summary

Issue(s)
  1. Whether a finding of trade mark infringement breached Article 10 of the European Convention of Human Rights ("ECHR").
  2. Whether the UK’s statutory regime, which allows for a "series of marks" to be presented as a single trade mark registration, is compatible with the principle of clarity and precision of the trade marks register under EU law.
  3. Whether evidence of "wrong way round confusion" is relevant to the determination of a trade mark infringement.
Facts

The Respondent operates a number of live entertainment venues in the UK used primarily for stand-up comedy, but also live and recorded music and nightclub and cabaret entertainment. It owns a UK-registered trade mark, which relates to a series of two device marks which included the words "the glee CLUB" and is registered in respect of variety of entertainment services. In 2009 the Appellant broadcast in the UK a successful musical comedy television series called glee with associated concert tours and merchandise, using the sign "glee" in similar lettering to the Respondent’s mark. The Respondent brought trade mark infringement and passing off proceedings against the Appellant. The High Court found that the Appellant’s activities infringed the Respondent’s registered trade mark but the claim in passing off failed. The Appellant appealed and the Respondent cross-appealed. The Court of Appeal dismissed both the appeal and cross-appeal.

Judgments appealed

[2016] EWCA Civ 41

[2016] EWCA Civ 455

Parties

Appellant(s)

Twentieth Century Fox Film Corporation

Respondent(s)

Comic Enterprises Ltd

Appeal

Justices

Lady Hale, Lord Kerr, Lord Sumption, Lord Reed, Lord Briggs

Hearing start date

02 Nov 2017

Hearing finish date

02 Nov 2017