Is Evidence of Confusion Really Necessary to Succeed in a Trademark Infringement Case?

Dorsey & Whitney LLP

It is not every day that a massive international TV hit show is found to infringe a trade mark. A decision of the English High Court, approved recently by the Court of Appeal, held that the popular 20th Century Fox teenage music show “glee” (including the accompanying live show and the merchandising trade it spawned) infringed the trade mark of a local English comedy club known as THE GLEE CLUB. The decision did not introduce any novel developments in trade mark law. In fact, it was a pretty ordinary and typical case. But it is a good example of the practical side of conducting trade mark infringement cases in the UK.

The decision of the Court of Appeal focused to a large extent on the evidence, particularly the 20 witness statements adduced by the claimant to establish the likelihood of confusion. The Court of Appeal was highly critical of the manner in which the trial judge analysed the evidence and as a consequence went itself through much of the witness evidence in some detail. The defence was all about picking holes in the evidence, challenging its probative value and shredding it to pieces. The effort was not entirely unsuccessful. The Court of Appeal accepted much of the criticism and found that some of the witness evidence had limited probative value. Some confusion, for example, related to the way the word “glee” was used in practice in relation to the claimant’s clubs, not necessarily to the claimant’s use of the registered trade mark (a copy of which is reproduced below). The Court of Appeal tended to agree that that sort of evidence was not sufficient to demonstrate likelihood of confusion with the registered mark.

Much debate was on the factual value and the legal relevance of evidence of “wrong way around” confusion, known as “reverse confusion” in the United States. This type of confusion occurs when the reputation or fame of the defendant’s brand overshadows that of the registered trade mark, such that the public comes to believe that the trade mark owner’s (that is, the claimant’s) goods or services come from or are connected with the defendant. This is to be distinguished from the more conventional theory of confusion, in which the claimant maintains that the public is likely to believe that the defendant’s good or services come from or are connected with the claimant. 

In the “glee” case, witnesses testified that having been aware of the defendant’s TV show, they mistakenly believed, when they first encountered one of the claimant’s clubs, that it was related to the TV show. The Court of Appeal confirmed that legally it makes no difference which way the confusion goes (unsurprisingly – it would have been inconsistent with established case law to hold otherwise). Nevertheless, the Court considered very closely the defendant’s criticism regarding the probative value of some of the “wrong way around” evidence of confusion and found some of that criticism to be at least partially justified.

Overall, however, the Court of Appeal concluded that the witness evidence did support the finding of likelihood of confusion and confirmed the result reached by the first instance. Splitting hairs on the finer points of the evidence did not save the day for the defendant. But in fact the case did not turn so much on the evidence. It seems the evidence did not matter so much. What determined the result, in the main, was quite simply the similarity between the registered mark and the defendant’s sign “glee” and the similarity between the services protected by the registration compared to those for which the defendant used its sign. That was really enough to establish likelihood of confusion.

The claimant’s registration was for two versions of a figurative mark comprising the words “the glee club” (in lower case) against a backdrop image of a spotlight (representing the stand-up comedy stage). The two versions of the claimant’s marks are reproduced below:

the glee club

The registration claimed “live comedy services; nightclub and cabaret entertainment; music hall services; provision of live and recorded music” etc. (Some additional categories of services including “entertainment services” and “production and/or presentation of radio and television programmes” were revoked for non-use by the trial court).

The case at that level was quite straightforward. Whilst the registered mark was a composite mark with figurative elements and three words, the Court found no difficulties in holding that the dominant element of the registered mark, and the one element that actually mattered, was the word “glee” and that the figurative elements and the first and third words in the phrase “the glee club” were of minor significance. Compared to the name of the TV show “glee” the similarity may not have been of the highest order but, it was held, it was still pretty significant. 

Equally, the similarities in the services offered under the parties’ respective marks were difficult to deny. Whilst a television show featuring a singing club in a fictional school does not fall squarely within the categories of “live comedy services, music hall services and the provision of live and recorded music” these types of services are still quite close, both cases being essentially entertainment services focused (at least partly) on music and song. The live shows accompanying the “glee” TV series were clearly within the specifications of the registered trade mark.

Under EU and UK law, where the accused sign is similar to the registered trade mark and it is used in relation to goods or services which are similar to those for which the mark is registered, an infringement occurs where there is likelihood of confusion.   Given a sufficient level of similarities of the marks and services in question, a judge is perfectly entitled to find the existence of likelihood of confusion based solely on his or her own impression of the registered mark compared with the defendant’s use of its own sign. Evidence of the reputation of the registered mark can be important, as it usually supports the existence of likelihood of confusion. But evidence of actual confusion in the marketplace in many such cases is far from essential. After all, the claimant is only required to establish the “likelihood” - that is the potential  - of confusion, not actual confusion. This forward looking potential is something that in most cases a court can determine itself without the assistance of witnesses.

As reported in a previous note (see here), back in 2012 the English Court of Appeal held in the landmark case of Interflora v. Marks & Spencer that in the majority of trade mark infringement cases the evidence of witnesses from the public (which used to be consider almost essential to establishing likelihood of confusion) is of no real value and in fact should not be allowed by the court. The English courts routinely point out the objective difficulty that a trade mark owner faces in obtaining evidence of direct confusion. Consumers rarely have reason to complain (and they first have to become aware of their own confusion) so the evidence is not easily available. The value of polls and surveys to support confusion (or its potential), more common in the United States, has also been long discredited in the UK.

The evidence of confusion that the claimant relied on in the “glee” case was not entirely useless. Both the trial court and the Court of Appeal found that it was supportive of the result. Reading between the lines, though, it is quite possible if not likely that the same result would have been reached without any such evidence being presented to the court. 

One other interesting aspect of this case was that the very opposite result was reached (as it happens, by both the trial court and the Court of Appeal) in relation to the alternative claim of passing off.  Whilst the claimant was successful in establishing the existence of goodwill which is the first step in a claim for passing off, the High Court held, and the Court of Appeal agreed, that the evidence of confusion which was sufficient (or unnecessary) for the trade mark infringement case was insufficient to establish that the defendant’s use of the name “glee” for its TV series (and live shows) amounted to deception. The same criticisms raised by the defendant relating to the probative value of the evidence that were ultimately immaterial for the of trade mark infringement case were fatal insofar as it concerned the claim for passing off. 

The rule from Interflora v. Marks & Spencer that evidence of confusion  from members of the public is usually superfluous, does not apply to passing off cases, where the evidence is often critical. Further, likelihood of confusion, which is the test for most trade mark infringement cases, is a broader concept than the deception required to be shown in a passing off case. Importantly, to be effective to establish passing off, the consumer’s confusion or mistake as to the commercial source of the defendant’s goods or services (or as to the existence of a connection of these goods or services to the claimant) has to flow from the claimant’s goodwill and from the consumer’s familiarity with the claimant’s products or services (and from the use of a similar name, logo, packaging or other “get-up” or trade dress by the defendant). Reverse confusion or “administrative errors” arising simply due to the similarity of two names may be insufficient.

Enforcing a registered trade mark in the UK does not need to be cost prohibitive. A large part of the costs of a traditional case – carrying on consumer polls, using the evidence of survey experts and collecting the evidence of dozens of witnesses from the public – is not essential in many cases. A proper analysis of the basic facts can be enough to make out a case. Proving passing off is often more tricky. It is always better therefore to start with a registered trade mark.

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Dorsey & Whitney LLP

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