Smash-hit show TV Glee may have to be rebranded after its makers lost a new legal battle with the Birmingham comedy club of the same name .
US entertainment giant 20th Century Fox was defeated as it appealed an earlier court decision that it had infringed the Hurst Street venue's copyright .
Fox’s lawyers had previously argued that rebranding the multi-award winning show in the UK could have “catastrophic consequences” for the company.
There will be no new series of Glee but law experts said the ruling could affect repeats, future performances of the spin-off stage show, DVD and CD sales, as well as digital downloads. The court has yet to rule on a trademark issue.
The appeal court decision was welcomed by Mark Tughan , who runs the Glee chain of comedy clubs through the Comic Enterprises Ltd (CEL) company.
He tweeted: “Win. All over again in the Appeal Court!”
It was said that CEL could now even seek a percentage of the profits made from the TV series.
The David v Goliath legal battle is set to rumble on as Fox said it remained “committed to proving the merits of our case and delivering Glee to all its fans in the UK”.
But lawyer Sharon Daboul, of trademark specialists EIP, said the case should serve as a warning to other firms launching brands.
She said: “This decision is a reminder that registered trademarks offer powerful protection, and are effective regardless of a company’s size.
“A trademark registration provides an exclusive right to use the mark for the goods and services covered.
“Registering a trademark enables the owner to stop others from using the trademark or a similar trademark without its permission.
“In this David v Goliath dispute, even though CEL and Fox do not appear to be in the same area of business, the trademark registration was deemed broad enough to cover Fox’s use of the mark on the Glee television show.
“The investment required for a trademark registration can be relatively small in comparison with its potential value, as CEL no doubt has seen.
“Whilst Glee aired its sixth and final season between January to May 2015, this ruling will still affect television re-runs, future performances of the live show, DVD and CD sales, digital downloads as well as merchandise, and it will still be a significant blow for Fox.
“Rebranding is a costly and inconvenient exercise, and in earlier proceedings, Fox’s lawyers had argued that a rebrand could lead to “catastrophic consequences” for the company.
“All businesses need to consider the importance of properly clearing a brand before launch. It is far more expensive and inconvenient to rebrand after a product has been launched in the market.
“The prevention is always better than the cure.”
A spokesperson for Twentieth Century Fox Television said: “We note the Court of Appeal’s decision and welcome its consideration of the outstanding issues. We remain committed to proving the merits of our case and to delivering Glee to all of its fans in the UK.”
