The first question I am often asked by clients seeking to register a trademark is what the costs of obtaining the mark will be.
Whilst this is no doubt an important factor (especially for a start ups or emerging businesses), it is important that they consider the costs of enforcing the trade mark as well.
The case itself is evidence of the value of a trade mark registration in helping a business protect its brand, but the costs incurred by the Claimant in taking the matter to a hearing in the High Court and then the Court of Appeal will have been a significant drain on their resources. Unfortunately the case may not stop there with the Court asking for representations from each side before considering whether an additional issue needs to be referred to the European courts.
The trademark owner will of course have recovered some of his costs, but there will still most likely be a significant amount that he has to bear.
That is not a criticism of Twentieth Century Fox, as the value of their Glee brand will most likely far outweigh the costs that have been incurred, but you would have to question whether a commercial settlement would have been a cheaper and more commercial attractive proposition for each party.
In our experience the costs of bringing or defending trademark proceedings can often be determinative of the proceedings before they have even begun. Whilst there are ways of providing some costs protection (including by using the cost capping regime in the Intellectual Property Enterprise Court or appropriate Part 36 offers) ultimately the risks of litigation mean that more often than starting or defending proceedings remains a commercially unattractive option.
The smash hit US TV show ‘Glee’ may have to change its name in the UK after Twentieth Century Fox lost a David and Goliath legal battle with a British comedy business of the same name.
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