Comic Enterprises Ltd (claimant/respondent) Twentieth Century Fox Film Corporation (Defendant/Appellant)
| Jurisdiction | England & Wales |
| Judge | Lord Justice Kitchin,Lord Justice Lloyd Jones,Lady Justice Arden |
| Judgment Date | 08 February 2016 |
| Neutral Citation | [2016] EWCA Civ 41 |
| Docket Number | Case No: A3/2014/3075 & 3076 |
| Court | Court of Appeal (Civil Division) |
| Date | 08 February 2016 |
[2016] EWCA Civ 41
Lady Justice Arden
Lord Justice Kitchin
and
Lord Justice Lloyd Jones
Case No: A3/2014/3075 & 3076
IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION (Intellectual Property)
Mr Roger Wyand QC (sitting as a Deputy High Court Judge)
Royal Courts of Justice
Strand, London, WC2A 2LL
Douglas Campbell (instructed by Wragge Lawrence Graham & Co LLP) for the Claimant/Respondent
Iain Purvis QC and Simon Malynicz (instructed by Simmons & Simmons LLP) for the Defendant/Appellant
Hearing dates: 3/4/5 November 2015
Introduction
These are appeals and cross-appeals from orders made by Mr Roger Wyand QC sitting as a deputy judge of the High Court on 10 April 2014 and 24 July 2014. The proceedings concern a dispute about the right to use the word 'glee' as the name for a TV drama series.
The claimant ('CEL') operates a number of entertainment venues in the UK. This entertainment has generally taken the form of stand-up comedy acts but, since 2002, it has also included live and recorded music and nightclub and cabaret entertainment. By the end of 2009, which is accepted by the parties to be the relevant date for the purposes of these proceedings, CEL had two venues, one in Birmingham and the other in Cardiff. They opened in 1994 and 2001 respectively. In April 2010 CEL opened a third venue in Oxford and in September 2010 it opened a fourth in Nottingham.
CEL is the owner of UK registered trade mark number 2200698 ('the Mark'). This is a registration of a series of two device marks which look like this:
Each device includes the words 'the glee CLUB' written in a particular script and presented in a cone of light from a spotlight. It is accepted for the purposes of this appeal that nothing turns on the differences between them.
The Mark was registered in 2001 in respect of a wide variety of goods and services in classes 25 and 41 but by the order of 24 July 2014 it was partially revoked for non-use with effect from 21 April 2006, and the specification was limited to the following services in class 41:
"Live comedy services; night club and cabaret entertainment; music hall services; provision of live and recorded music; dancing; provision of facilities for comedy and music entertainment; production and presentation of live shows and displays and the presentation of sound recordings."
By the end of 2009 CEL had made extensive use of the Mark in connection with its business and the provision of the services the subject of the limited specification; and the Birmingham and Cardiff venues used external signage very similar, if not identical, to the Mark.
The external signage used for the Oxford venue was rather different and looked like this:
As may be seen, the spotlight has been removed and the word 'the' has been reduced in size relative to the word 'glee'. Moreover, the word 'club' is rendered largely invisible at night time, as shown in the image below:
The sign above the door of the Nottingham venue was also different. It consisted simply of the word 'glee' and, to each side of the door, the words 'café glee' appeared in other signage. The venue looked like this:
There has been extensive use of the Mark inside each of the venues ever since they opened. But I should also explain that the backdrop to the stage of each of the venues has always been dominated by the word 'glee' written in letters about 10 feet high, as shown below:
In addition, CEL has promoted its business using the words 'the Glee Club' and often just the word 'glee' alone. For example, its promotional e-mails are known as 'Gleemails'; events are promoted through the website www.glee.co.uk; and, since February 2009, it has had a Twitter account '@theGleeClub'.
CEL's business has been very successful. Frederick Tughan, a director and the sole shareholder, explained that it initially targeted men and women between about 18 and 34 years old and that it has attracted a good deal of publicity. In 2008 the turnover through the Birmingham and Cardiff venues amounted to around £2,400,000.
The defendant ('Fox') is the well known US entertainment company. In late 2009 it launched in the US and in the UK a musical comedy television series called 'glee'. By the time of the trial, glee was in its fourth season. Seasons one and two were broadcast on E4, and seasons three and four on Sky.
Glee is a musical comedy series about a high school singing club at the fictional William McKinley High School in Ohio. This club is called New Directions and it competes with singing clubs in other schools in what is described as the show choir competition circuit. The series has been characterised as light entertainment but has featured stories concerning relationships, sexuality, race and disability which were intended to resonate with young people at that time confronting such issues and with adults who had done so in the past.
There can be no doubt that glee has also been very successful and it has achieved high ratings in the UK and abroad. Viewing figures in the UK for the second series averaged 2.2 million, making it the highest ranking series on non-terrestrial television. By the time of the trial it had won six Emmy awards, four Golden Globe awards and two BAFTA nominations. It had also generated a great deal of publicity. There had been live concert tours; songs had been released as singles, albums and through the iTunes Store; and Fox had licensed a wide range of merchandise. The deputy judge summarised the position in these terms at [7]:
"Songs performed in the programmes, and album compilations thereof, have been sold in the United Kingdom, including via the iTunes Store. There have been two world concert tours, the second of which included performances in the UK at the Manchester Evening News Arena and the O2 Arena. These featured cast members in character performing musical numbers from the TV series. There have also been DVDs of the concert tour. The Defendant has also licensed a range of merchandise, including clothing, linked to the programme and the concert tour and bearing the word glee. This merchandise was sold at the venues."
Mr Tughan explained that he first encountered glee when channel surfing in 2010. At that time the first series was being broadcast. He looked further into it and settled on what he described as a wait and see strategy, thinking it might fade away. But after opening the venues in Oxford and Nottingham he found that the presence of glee was causing CEL what he considered to be real damage, as I shall explain. In his view the bulk of this damage was being caused to the business conducted through the Oxford and Nottingham venues because the older ones had stronger customer support. He believed that the brand had been substantially compromised and that in consequence he would be unable to expand further.
The proceedings
In September 2011 CEL began these proceedings, alleging that Fox's activities amounted to an infringement of the Mark and passing off.
The action came on for trial in July 2013 before Mr Roger Wyand QC, sitting as a deputy judge of the High Court. It occupied five hearing days. In his judgment given on 7 February 2014, the deputy judge decided, so far as relevant to this appeal, that the scope of the specification of the Mark should be limited in the manner I have described in light of the use that CEL had made of it; that the Mark was validly registered in respect of this limited specification of services; that the activities of Fox amounted to an infringement of the Mark under s.10(2) and s.10(3) of the Trade Mark Act 1994 ('the 1994 Act'); but that the claim in passing off failed.
A further hearing took place before the deputy judge on 10 April 2014 at which he heard submissions from the parties in relation to the outstanding issues concerning the form of order he should make. In his further judgment of 18 July 2014, the deputy judge held that CEL was entitled to a final injunction to restrain Fox from using the word glee as the name of its series, save that Fox should be entitled to say that the series was previously known as glee; that CEL was entitled to an enquiry as to damages or, at its option, an account of profits; and that Fox should pay to CEL £100,000 on account of those damages or profits.
The appeal
Upon this appeal Fox contends that the deputy judge fell into error in finding infringement under s.10(2)(b) and s.10(3) of the 1994 Act. It has also made an application for permission to amend its defence and counterclaim to introduce a claim that the Mark is invalid because s.41 of the 1994 Act (which allows series marks to be registered) is not compatible with the requirement in EU law that a trade mark must be 'a sign' in the sense of being a single sign and capable of being 'graphically represented' as such pursuant to Articles 2 and 3 of Directive 2008/95/EC ("the Directive") and s.3(1)(a) of the 1994 Act. At the trial, Fox reserved this point of law for any appeal and it submits that where, as here, the issue does not require any finding of fact, it would be appropriate for this court to exercise its discretion to hear the issue, since otherwise the rights of the parties might be dealt with on a false and artificial basis. But it has only advanced this submission contingently for it has made clear that it would not be pursued were it to succeed on other grounds.
CEL responds that there is no basis for this court to...
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