Wragges and Simmons advise as Birmingham club takes on Fox TV over Glee name

Simmons & Simmons and Wragge & Co are set for a High Court trademark trial next year with a Birmingham comedy club trying to take Fox TV’s ‘Glee’ off the air.

Rupert Murdoch’s Fox Entertainment is being sued by events organiser Comic Enterprises for alleged trademark infringement and has instructed IP partner David Stone of Simmons and 3 New Square’s Simon Malynicz. Comic Enterprises, which is run by Mark Tughan, has instructed Wragges IP partner and head of brands Cerryg Jones and 3 New Square’s Douglas Campbell.

The claim brought by Comic Enterprises is that its use of the name ‘The Glee Clubs’ for its comedy clubs, which have been running in the UK for 20 years, is being infringed by the Fox programme owned by Murdoch’s Hollywood studio. It is seeking a damages payout believed to be seven figures.

Lawyers for Tughan have said he registered the trademark ‘The Glee Club’ in the UK for merchandise and entertainment services in 2001. Glee first aired in 2009 on US TV.

A judge in the case has already said that shutting down Glee would have a “catastrophic consequence” for Fox and because of the importance of the claim it has been transferred from the Patents County Court to the High Court and listed for a one-week trial in July next year.

The case has helped shape law on when to transfer disputes between a small or medium enterprise and a larger organisation between courts.

The crux of the trial will be to establish when a prior user of the trademark with a niche use can halt a global TV programme from going to air.

So far, Fox’s case has been that the term ‘Glee Club’ is generic for singing groups. The dispute came to light in September last year.

The claim was originally brought by Cobbetts director Darren Kenny, who instructed Denise McFarland of 3 New Square, until Judge Birss QC ruled against the claimant and said that the case must be transferred to the High Court. At that point Comic Enterprises switched to Wragges.

Judge Birss said: “The problem is obvious. Both sides use the word ‘glee’ and even their core fields of activity are not far apart. Whether they precisely overlap, how that position has developed over time and the precise details of the parties’ use of the word along with other indicia and so on are all in issue but it’s not difficult to see why this case might have arisen.”