Legal victory for comedy clubs with the same name

Hit musical series Glee could be forced off air after Rupert Murdoch’s 21st Century Fox lost a legal battle with the comedy club chain of the same name.

The Glee Club, which has venues in Birmingham, Nottingham, Cardiff and Oxford, today won a High Court victory protecting its trademark covering live comedy and music.

Ruling in the comedy club’s favour after a bitter three-year legal battle, Deputy Judge Roger Wyand QC said: ‘I have found that there is a likelihood of confusion. Continued use cannot be in accordance with honest practices.’

The Deputy Judge agreed that some potential customers would be discouraged from going to the Glee Club venues in case they were connected to the TV series. He did not make any mention of compensation in his written ruling but did state subsequent issues would be studied at another hearing.

Club owner Mark Tughan said he was threatened with losing his personal assets if he lost the case, and described today’s ruling as ‘a huge relief’.

He said the TV show could now be taken off air in the UK, Glee merchandise and DVDs removed from UK shops and music downloads halted. 

The Glee Club, was established in Birmingham in 1994, has held a registered trade mark for comedy and music entertainment services in the UK since 1999 – ten years before Glee first aired in the UK.

Tughan, said: ‘When Glee was first broadcast on national TV in the UK in early 2010, we knew that we had a problem. As a small independent company we had no way of competing against the advertising and marketing might of the Fox Corporation and knew that our brand and reputation for original and credible comedy and live music would be damaged.’

He claimed that ‘the confusion caused by the similarity of the names and branding in the same field of entertainment services has led to us losing custom’ and said it ‘hampered’ the company's ability to establish its newer venues in Oxford and Nottingham.

‘Smaller independent businesses should take heart from today’s decision, as it clearly shows that trademark infringements by large multi-national companies can be effectively challenged in British courts,’ he said. ‘Trademark law does not exclusively exist for the world’s largest companies, able to spend millions of pounds to protect their Intellectual Property, whilst simultaneously infringing the trademarks of others.’

Wragge &  Co’s, Cerryg Jones, who led the Glee’s case claimed Fox ‘refused to recognise the damage’ they were causing . ‘The High Court heard evidence for several days and came to the clear conclusion that the TV show was confusing customers, and diluting and tarnishing the Glee Club brand,’ he said.

Fox have now said they intend to appeal the ruling.

Published: 7 Feb 2014