Comic Enterprise Limited v Twentieth Century Fox Corporation [2016] EWCA Civ 41 and [2016] EWCA Civ 455
20th Century Fox appealed against a finding that its well-known GLEE television series infringed a registered series of device marks incorporating the word GLEE owned by a comedy club business on the basis of a likelihood of so-called ‘wrong way round confusion’. The Court of Appeal held that the Judgment below was vitiated by a number of errors, but, having reviewed the evidence for itself, considered on balance that there was a likelihood of confusion sufficient to establish infringement, even though the claim in passing off failed. They rejected the submission that ‘wrong-way round confusion’ evidence was inadmissible in a trade mark case. The Supreme Court has been asked for permission to appeal. Iain Purvis QC appeared for the Appellant, 20th Century Fox.
In the second part of this Appeal, 20th Century Fox asked for a reference to the CJEU on the question of whether the home-grown UK provisions on ‘series marks’ under s41 of the Trade Marks Act 1994 were compatible with the Trade Marks Directive. The Court of Appeal held that the ‘single point of comparison’ approach to series marks taken by Richard Arnold QC (as he then was) in Sony Ericsson Mobile Communications AB’s Trade Mark Applications (O-138–06) and followed subsequently by Birss J in Thomas Pink Ltd v Victoria’s Secret UK Ltd [2014] EWHC 2631 could not be reconciled with the requirements for certainty of scope under European trade mark law. However, they accepted the contentions of the IPO that this was not the correct interpretation of series marks under the 1994 Act. Such marks should be treated as ‘bundles of individual registrations’. On this basis, they held that there was no arguable conflict between s41 and the Trade Marks Directive and refused a reference. Iain Purvis QC appeared for the Appellant, 20th Century Fox.