In a recent trade mark case, the Court of Appeal of England and Wales (COA) held that whether the confusion is “right way round” or “wrong way round” is irrelevant for the purposes of an infringement action. Although not binding on an Irish court, the judgment is likely to be persuasive.

Background

• In Comic Enterprises Ltd v Twentieth Century Fox Film Corporation EWCA Civ 41 the Claimant (“Comic Enterprises”) issued proceedings against the Defendant (“Fox”) alleging trade mark infringement and passing off due to Fox’s use of the word GLEE as the name of a musical comedy television series.
• Comic Enterprises (an operator of a number of entertainment venues in the UK) owned a UK series trade mark for the following mark:

• At first instance, the UK High Court held that there was trade mark infringement under the UK equivalent of Section 14 (2) and 14 (3) of the Irish Trade Marks Act 1996 but held that Comic Enterprises could not sustain a claim for passing off.
• Fox appealed the decision on a number of grounds including that the “wrong way round evidence” was irrelevant to the issue of infringement and also that it was irrelevant as a matter of law.
• Fox defined the “wrong way round” confusion case as being one in which a consumer familiar with the accused sign is confused upon seeing the earlier mark, i.e. a consumer on seeing or hearing of Comic Enterprises’ business believed it to be connected to Fox’s TV series.
• Fox defined “right way round confusion” as being one in which a consumer familiar with the earlier mark is confused upon seeing the accused sign, i.e. consumers on seeing or hearing of the TV series believed it to be connected to Comic Enterprises.

Section 14 (2) Infringement

• Section 14 (2) infringement occurs where the respective marks are identical/similar and the goods are similar/identical and there is a likelihood of confusion which includes the likelihood of association.
• Fox alleged that “wrong way round confusion” can only occur when a defendant has an established reputation in the jurisdiction which it did not have at the date of its launch.  Fox alleged this leads to a peculiar situation whereby the defendant’s sign would not infringe an earlier registered trade mark when the defendant first launched (i.e. as it would not have had a reputation at that time), but would later infringe a registered trade mark as its reputation grew sufficiently to generate the risk of “wrong way round” confusion.
• The COA did not accept that this rendered “wrong way round” evidence inadmissible. The COA said that the infringement analysis involves an element of looking forward and assessing whether there is a likelihood of confusion in light of the defendant’s actual and threatened activities. The COA said that evidence which comes to light after the date of the defendant’s launch may assist the court to answer that question.
• The COA said that “whether a particular instance of confusion is “right way round” or “wrong way round” may be a consequence of nothing more meaningful than the order in which the consumer happened to come across the mark and the sign”. In either case “the consumer thinks that the goods or services come from the same undertakings or economically linked undertakings and they may be equally damaging to the distinctiveness and functions of the mark”.

Section 14 (3) Infringement

• Section 14 (3) infringement occurs where the respective marks are identical/similar and the use of the later mark takes unfair advantage or is detrimental to the distinctive character or the reputation of the earlier trade mark (which has a reputation in the State).
• Fox argued that Section 14 (3) infringement can be only “right way round” as Section 14 (3) is based on the reputation of the earlier mark rather than the later mark.
• The COA disagreed. It said that it was inevitable that the many consumers would come across the Glee TV series before they came across Comic Enterprises’ earlier mark but the evidence was such that an average consumer would likely make a connection between the accused sign and the earlier mark.
• The COA said that actual and potential customers of Comic Enterprises were connecting Fox’s programme with the business of Comic Enterprises and this was causing detriment to Comic Enterprises.

Passing off

• The COA upheld the High Court’s ruling that there was no passing off stating that it was important to keep in mind the distinction between confusion and misrepresentation.
• Whilst the opening of Comic Enterprises’ two new venues led to significant wrong way round confusion, the COA said that this did not make Fox guilty of misrepresentation.

Compatibility of Series Marks with EU Law

• Series trade marks are a type of trade mark registration which it is possible to obtain in a number of countries including Ireland and the UK. It is not possible to get a series trade mark at OHIM. Series trade marks permit the registration in a single registration of a number of trade marks which materially reassemble each other and only differ in respect of non distinctive elements which do not substantially alter the identity of the trade mark.
• Fox alleged that Comic Enterprises’ series mark was invalid as they were not compatible with EU law. Fox alleged that that a sign must be “a sign” in the sense of being a single sign and capable of being “graphically represented”.
• The UK Intellectual Property Office (IPO) filed submissions with the court maintaining that series marks were compatible with EU law. The UK IPO alleged that any doubt about that stems from a misunderstanding about the meaning and significance of a series of trade marks; a series of trade marks is a bundle of separate and individual trade marks each of which must comply with the requirement of the Trade Marks Directive, and each of which is entitled to the protection afforded to every trade mark under EU law. 
• The COA decided to reserve consideration of this issue for a later date in order to enable the parties to respond to the UK IPO’s observations on the issue.

Conclusion

• The decision highlights the benefit of a trade mark registration where confusion will be sufficient without the necessity of proving misrepresentation.
• The decision also demonstrates that a later mark can become infringing if it builds up a reputation which gives rise to wrong way round confusion.

Contributed by Laura Scott and Colette Brady