Comic Enterprises Ltd v Twentieth Century Fox Film Corporation
| Jurisdiction | England & Wales |
| Judge | Mr Roger Wyand |
| Judgment Date | 07 February 2014 |
| Neutral Citation | [2014] EWHC 185 (Ch) |
| Docket Number | Case No: HC 12 B02393 |
| Court | Chancery Division |
| Date | 07 February 2014 |
[2014] EWHC 185 (Ch)
Mr Roger Wyand QC sitting as a Deputy High Court Judge
Case No: HC 12 B02393
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY
Rolls Building
7 Rolls Buildings
Fetter Lane
London, EC4A 1NL
Douglas Campbell (instructed by Wragges LLP ) for the Claimant
Simon Malynicz and Stuart Baran (instructed by Simmons & Simmons LLP) for the Defendant
Hearing dates: 17 th, 18 th, 19 th, 22 nd and 23 rd July 2013
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
Mr Roger Wyand QC:
Introduction
This is an action for infringement of United Kingdom registered trade mark no. 2200698 and for passing off. The Claimant, Comic Enterprises Limited, is a small to medium sized enterprise and it runs a number of live entertainment venues in the United Kingdom which are used primarily for providing stand-up comedy although they are also used for other forms of entertainment including live music. Its venues, together with the date it started trading at each venue are: Birmingham (1994), Cardiff (2001), Oxford (April 2010) and Nottingham (September 2010). It has always offered comedy at its venues and it has offered live music since 2002 at Birmingham, since 2004 at Cardiff and since 2010 at Nottingham.
The registered trade mark is a series of two marks. They are both device marks which include the words "The Glee Club". The words are presented in a representation of a cone of light from a spotlight. The two marks are identical save that the first in the series is stated to be claimed in the colours red, black and white whereas the second is represented in black and white with no claim to colour. I shall deal with the significance of the colours below. This is the representation of the trade mark:
The passing off claim goes wider than the registered trade mark in that it relies on the unregistered marks "Glee Club", "Glee" and "the Glee Club" without the device. The Claimant registered the domain name www.glee.co.uk in 1998.
The trade mark, ("the Mark") was filed on 19 June 1999 and was registered on 20 April 2001. It is registered in respect of classes 25 and 41 for the following goods and services:
Class 25
Articles of outer clothing; articles of sports clothing; footwear; shirts; shorts; T-shirts; socks; sweatshirts; sweaters; headgear; scarves; jackets; braces; wrist bands; tracksuits; ties; belts.
Class 41
Entertainment services; comedy services; night-club and cabaret entertainment; music hall and orchestra services; show production services; provision of live and recorded music; dancing; amusement arcades; provision of recreational facilities; organisation of contests and competitions; production and/or presentation of radio and television programmes, live shows, displays, films and of sound and video recordings; booking agency services; rental of radio and television programmes, films and of sound and video recordings; publication services; consultancy, advisory and information services relating to the aforesaid services.
The Defendant, Twentieth Century Fox Film Corporation ("Fox") is the well known media company. It is responsible 1 for a television series entitled glee 2 which is produced in America. It is currently in its fourth season. The first programme, the pilot episode, was broadcast in the United Kingdom in December 2009. Seasons 1 and 2 were broadcast on E4, series 3 and series 4 on Sky. The series has been very successful and has achieved high ratings in the UK.
glee is about an American high school singing club at the fictional William McKinley High School in the town of Lima, Ohio. The series follows a group of characters most of whom are members of, or are otherwise involved in, their school singing club called "New Directions". New Directions competes against other clubs in other schools. The series touches on a variety of social messages and issues relating to relationships, sexuality, race and physical disability.
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,
The Claimant says that all these activities, when carried out in the United Kingdom, infringe the Mark and pass off the Defendant's show and associated products as being associated in the course of trade with the Claimant. The Defendant denies infringement and passing off and counterclaims for partial invalidity and partial revocation of the Mark.
Although not in issue in these proceedings, the Defendant has a Community Trade Mark registration for "GLEE" in, inter alia, Class 41 for "Entertainment services in the nature of television series featuring comedy and musical comedy".
A preliminary point
As a preliminary matter the Claimant objected to certain evidence that had been served by the Defendant directed to the issue of the use and meaning of the words "Glee Club". There were two distinct types of evidence being put forward. The first type was witnesses giving factual evidence as to the existence of several societies which had used or are using the word "glee" as part of their name and of their personal knowledge of the meaning of the word "glee". The second was evidence from an expert, Dr Kilgarriff. Dr Kilgarriff is an expert in, as he puts it, "researching he behaviour of words" (i.e. how words have been used over time and what meaning(s) words have).
So far as the first group of witnesses was concerned Mr Campbell objected to them on the basis that their evidence could not be of assistance since they were merely individuals with their own knowledge and views and could not be put forward as representative of the views and knowledge of the public. They had been selected by means of a witness collection exercise which had not been disclosed. Mr Campbell relied on the two Court of Appeal judgments in the Interflora v Marks & Spencer litigation, Interflora I [2012] EWCA Civ 1501 and Interflora II [2013] EWCA Civ 319.
On behalf of the Defendant, Mr Malynicz submitted that the judgments in the Interflora cases could be distinguished from the present case. In Interflora, the issue was whether the average consumer was likely to be confused. Lewison LJ, who gave the judgment of the court in both cases, made it clear that for evidence to be relevant to this issue it had to be capable of being representative of the average consumer's reaction. The only exception would be evidence of actual confusion. For the evidence to be representative, it was necessary to look at any witness collection exercise and to examine the sample of the public.
In this case, Mr Malynicz sought to rely on the witnesses to establish that "Glee Club" was a term that was in use in the United Kingdom. He sought to base an attack on the validity of the registration of the Claimant's trade mark on the fact that "Glee Club" is descriptive of a particular type of singing club. This type of evidence, he said, did not need to be representative. It was straightforward evidence of fact and did not depend upon the representativeness of the witnesses.
I agree with Mr Malynicz with the exception of the evidence which is typified by one paragraph in the witness statement of Catherine Ruth Ingram Smith where she states her opinion that the term "Glee Club" is a generic term that has an ordinary dictionary meaning. I indicated to counsel that I did not intend to place any weight on that paragraph or similar paragraphs in the other witness statements where the witness expressed his or her opinion on the status of the term. Otherwise, I was prepared to let that evidence in.
So far as the evidence of Dr Kilgarriff is concerned, Mr Campbell objected to it on the basis that his evidence is expert evidence which requires the leave of the court before it can be adduced and no such leave had been sought in this case. Although Dr Kilgarriff expressly states in paragraph 3 of his witness statement that he was instructed not to provide expert evidence he is, Mr Campbell submitted, using his skill and training. He gives evidence of "various searches I performed in relation to the word glee in order to demonstrate usage." Mr Campbell points to the fact that Dr Kilgarriff has carried out his searches using various databases, some of which would be unknown to the average person. He has, Mr Campbell says, used his judgment as to which sources of information to take. He suggests that, although Dr Kilgarriff has not expressed an opinion (which would clearly be expert evidence if he did), that Mr Malynicz would express the opinion based on the evidence of Dr Kilgarriff's evidence.
Mr Campbell relied on the case of Fenton v Arcadia [2013] EWHC 1945 (Ch) where Birss J excluded the evidence of a music industry consultant whose job it was to study fans. He gave evidence as to the expectation of fans that High Street retailers of standing sell official merchandise. Here, Mr Campbell submitted, we have comparable evidence being given by Dr Kilgarriff and it should be excluded for the same reason.
In Fenton v Arcadia, Birss J set out a passage from the judgment of Lewison J (as he then was) in O2 v Hutchison [2006]...
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