Introduction
Comic Enterprises Ltd v Twentieth Century Fox Film Corporation [2012] All ER (D) 162 (Mar)
The Patents County Court (PCC) granted Twentieth Century Fox transfer to the High Court to defend a claim for trade mark infringement and passing off brought by Comic Enterprises. The decision demonstrates that small and medium-sized enterprises (SME’s) do not have an automatic right to bring and keep cases before the PCC, and provides some insight into when cases will be transferred to the High Court.
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Background
The claimant, Comic Enterprises, is run by Mark Tughan, the single shareholder and owner of four comedy venues which also hold live music and cabaret events. The business was set up in 1994 and has a device trade mark for ‘THE GLEE CLUB’ (in classes 25 and 41 for clothing and entertainment services).
The claimant maintains that its Glee Clubs have suffered from confusion with the defendant’s popular US television show ‘Glee’ about a school choir called ‘Glee Club’. To describe the show simply as popular may be an understatement - Glee is one of the most popular shows in the UK, and song sales are now in excess of 1.72 million compilation albums and 3.46 million singles. The defendant has a variety of UK trade marks and CTMs registered in 2010 (in various classes including entertainment services).
The claimant sought injunctive relief which, if granted, would stop the defendant from using the name ‘Glee’ and bring the show off air in the UK. The claimant submitted that its claim should remain in the PCC, claiming that any costs order against it obtained by the defendant would be devastating for its business.
Despite having known of the defendant’s television programme since 2010, the claimant did not seek an injunction or start proceedings until 2011 because he thought the programme might “fade with time”.
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Decision
In reaching its decision, the PCC considered the purpose of the court, namely to provide a forum where SMEs can access cheaper and faster access to justice in IP disputes.
Following the judgement in Alk-Abello v Meridian Medical Technologies, the court considered the:
- financial position of the parties;
- value and complexity of the claim, and estimated length of the trial (and therefore whether it was appropriate for the PCC); and
- importance of outcome to the public in general.
The PCC allowed transfer to the High Court, stating that the decisive factor for its decision was the claimant’s approach to the litigation. The claimant sought to run the case as a full scale High Court action with a claim for an injunction which would have devastating consequences for the defendant.
Whilst access to justice for SMEs was capable of being a decisive factor when deciding whether or not to transfer cases to the High Court, the ultimate objective of an order to transfer was to do justice between the parties.
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Implications
The PCC is intended to be a forum to facilitate access to justice for smaller rights holders. However, in order to deal with cases justly, SME’s do not have an automatic right to maintain claims in the PCC - claims must fall realistically within the scope and purpose of the PCC. SME’s cannot attempt to conduct large scale High Court litigation in the PCC.
This decision, together with the transfer of two 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.
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