Permission to appeal

Permission to appeal decisions

8 December 2016

The Supreme Court has today announced its decision on the following two permission to appeal applications. These decisions were made by a panel of three Supreme Court Justices following a review of the relevant written submissions.

Twentieth Century Fox Film Corporation (Appellant) v Comic Enterprises Limited (Respondent) UKSC 2016/0135

On appeal from the Court of Appeal Civil Division (England and Wales)

Permission for Twentieth Century Fox to appeal was granted in part in a case relating to a trademark dispute.

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. Twentieth Century Fox appealed to the Supreme Court on three grounds.

The Supreme Court granted permission to appeal on one ground which is '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'.

The Court has refused permission to appeal on the remaining two grounds of 'whether a finding of trade mark infringement breached Article 10 of the ECHR' and 'whether evidence of "wrong way round confusion" is relevant to the determination of a trade mark infringement' as they raise no arguable point of law.

The Court of Appeal judgment being appealed is availabe here:

A hearing will be scheduled in due course.

IFX Investment Company Ltd and Others (Respondents) v Commissioners for Her Majesty's Revenue and Customs (Appellant) UKSC 2016/0120

On appeal from the Court of Appeal Civil Division (England and Wales)

Permission for HMRC to appeal was refused in a case relating to whether "Spot the Ball" is a game of chance and therefore exempt from VAT.

The issue in this case was whether operators of "Spot the Ball" competitions were exempt from VAT as providing "facilities for the playing of games of chance". The period in issue was from 23 April 1979 to 31 December 2006. A typical coupon invited a participant to use "skill and judgment" to decide in a picture where he thought the centre of an imaginary football should be, and to indicate that spot by making a cross. The rules made clear that the winner would be decided not by reference to the actual position of the ball, which had been removed from the picture, but by reference to the opinion of a panel of experts as to which entry was the most skilful or was closest to the panel's opinion of the most logical position of the ball. The First-tier Tribunal decided as a preliminary issue that "Spot the Ball" is "a game of chance". On appeal, the Upper Tribunal found that "Spot the Ball" is not a "game" and is not "played". The Court of Appeal restored the First-tier Tribunal's decision.

The Supreme Court has declined to hear the appeal and the Court of Appeal judgment will therefore stand:

The substantive text of the Supreme Court's Order reads:

"The Court ordered that permission to appeal be refused because the application does not raise an arguable point of law of general public importance which ought to be considered at this time bearing in mind that the case has already been the subject of judicial decision and reviewed on appeal".