Comic Enterprises Ltd v Twentieth Century Fox Film Corp
 EWPCC 13, 22 March 2012
The Patents County Court (PCC) has granted a
request by Twentieth Century Fox to allow its defence of a claim
for trade mark infringement and passing off brought by Comic
Enterprises to be transferred to the High Court.
The claimant, Comic Enterprises, is owner of
four comedy venues in Birmingham, Cardiff, Nottingham and
Oxford. The business started in 1994 and the claimant
registered a device trade mark for ‘THE GLEE CLUB’ in classes 25
and 41 for clothing and entertainment services in 1999.
The defendant, the world famous film and
television company, Twentieth Century Fox, produces the very
popular television programme ‘Glee’. Glee first aired in the UK in
December 2009 and is also now one of the most popular shows in the
UK, protected by various UK and Community trade marks registered in
2010 for entertainment services and other goods and services (e.g.
cosmetics, toiletries, games). Comic Enterprises had been aware of
the Glee programme and the various trade marks since 2010, but
proceedings did not commence until 2011 because the claimant
anticipated that the programme might “fade with time”.
Comic Enterprises has sought to stop Twentieth
Century Fox from using the name ‘Glee’ in the UK, claiming that it
owns the rights to the name, and that the film studio is infringing
its trade mark rights. Comic Enterprises has sought an
injunction which, if granted, could mean that the Glee TV show
could be forced off the air.
The issue for consideration in this
application was whether it was appropriate, in all the
circumstances, to grant a transfer of the claim to the High
Twentieth Century Fox submitted that all or
most of the relevant factors militated strongly in favour of
transfer, including the complexity of the case; that it was likely
to last longer than two days and that the costs order was likely to
be high. Comic Enterprises contended that it was a small and
medium-sized enterprise (SME) and an order for costs made against
it would be devastating to its business. Comic Enterprises
therefore submitted that its claim should remain in the PCC.
The following factors were taken into account
by the PCC in granting the transfer to the High Court:
- the financial position of the parties;
- the value and complexity of the claim;
- importance of the outcome to the public in
However, the decisive factor was the way in
which Comic Enterprises was seeking to run the proceedings, i.e.,
as a full scale High Court action with a claim for an injunction
which would have devastating consequences for the defendant. This
was inconsistent with the objective of the PPC which is to enable
smaller undertakings access to cheaper and quicker actions in IP
disputes. The PCC found that the claim was of very high value and
that Comic Enterprises had not approached the litigation as a PCC
claim. Further, the case could not be tried in two days under the
The decision provides some insight into the
circumstances under which cases will be transferred to the High
Court. In particular, the decision has demonstrated that SMEs
are not automatically entitled to keep cases before the PCC,
particularly in instances where they are attempting to run full
scale High Court style litigation. The purpose of the PCC is
to facilitate access to justice for smaller rights holders.
However, this requires that claims fall realistically within the
scope and purpose of the PCC.
This decision, together with the transfer of
two other recent cases (Alk-Abello
v Meridian Medical Technologies and A.S.
Watson v Boots) from the PCC to the High Court,
demonstrates that the PCC will not hear more complex or
evidence-heavy cases, as two days will simply not be sufficient to
consider the evidence and deal with the case justly.
While each case will turn on its own facts, it
is useful for an SME considering the PCC as a forum for litigation
to note the compromises that may need to be made in order for it to
avoid the greater financial risks of High Court litigation and
preserve the advantages offered by the PCC.
Denholm, Trade Mark Attorney, IP Protection and IP Enforcement and
Litigation at Field Fisher Waterhouse.