Mr. Shue wouldn’t be too pleased about this: Lawrence Robins of Sullivan & Worcester explains that 20th Century Fox Corp. was ordered by a U.K. judge to change the name of its television show “Glee” as it infringes on the name of a chain of British comedy clubs, “The Glee Club.” The rationale relied on by the judge was the doctrine of “reverse confusion,” which means the less-popular brand’s business would become associated with the better-known one, explained Robins.
Similarly, Pinterest lost a case in Europe when it opposed the trademark Pinterest in the EU, as the social network was “unable to prove … that its PINTEREST mark had sufficient ‘local significance’ in the U.K.,” explained Robins.
Though problematic for the companies involved, Robins says these two cases should be seen as warnings for U.S. trademark owners to reconsider their international IP strategies. Searches should be done in international markets for similar trademarks before securing something in the U.S., he says, and global trademark plans should be put in place early in the company’s conception.
“While international searching and registration are costly, the cost to either defend an infringement suit or change branding in an entire geographic region can be exponentially more,” he rationalizes. So go out on a high note, and get searching.