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It is not over yet, says popular US TV show Glee's producers 20th Century Fox after it lost its appeal to British comedy chain The Glee Club, over a trademark dispute on the use of the name in the UK. The film studio says the case is still ongoing and could be referred to the European court.
The company, which is owned by media mogul Rupert Murdoch faces "catastrophic consequences" that would involve the rebranding of Glee, which covers repeat shows, DVD sales, stage show performances and downloads if it is forced to change its name in the UK.
Fox's lawyers have confirmed that the company will continue to appeal, adding that the case is still ongoing and could be referred to the European Courts for another judgement. The appeal court, in dismissing the appeal by Fox earlier this week, will now consider whether the EU trademark law affects its ruling.
The film studio had argued that its TV show did not have to change its name, claiming the EU law which states that a trademark must be "a sign" in that it is a single sign and capable of being "graphically represented." The show's name, Fox said, did not fall in this category.
The Appeal Court judges have asked both parties and the UK Intellectual Property Office to put forward their submissions on the issue by 15 February, when they will consider whether to send the dispute to the European Courts.
In a statement Fox 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 delivering Glee to all of its fans in the UK."
Fox has insisted that it had no prior knowledge of The Glee Club and that it will not be renaming Glee until the appeals process has been fully exhausted. Mark Tughan, the owner of The Glee Club which has venues in Birmingham, Nottingham, Oxford, Cardiff and Stoke, registered the name in 1999, 10 years before the US TV show first aired.
Tughan filed the case against the US musical comedy in 2011, claiming that his customers were put off attending his clubs because they thought they were associated with the popular teen series. In 2014, the court ruled that Fox had breached the comedy club's trademark rights. "The similarity of the names and branding in the same field of entertainment services has let to us losing custom and hampered our ability to establish our brand of cutting edge live comedy," Tughan had argued.
The Appeal Court's Lord Justice Kitchen held that "there exists a likelihood of confusion." Tughan added: "It has been going on for years and it really is a David versus Goliath situation. I cannot tell you how much it means to us. But the great thing about this is it proves that little companies can stand up for their rights."
Law firm Walker Morris in commenting on the High Court decision noted: "This case is a real David and Goliath case and demonstrates that even powerful corporations can be held hostage to third party trade mark rights if they have not checked the position as to existing trade mark rights in the countries in which they wish to exploit the brand."