• In the UK Office

    Football Crazy

    Three recent oppositions have featured well known football teams or characters and their attempts to defeat determined opponents.

    In the first case, the applicant was the North London football club, Tottenham Hotspur, who had sought to register the trade mark Tottenham in 1997 in respect of a wide range of goods and services. All of the claimed goods and services were, however, limited to those which related to Tottenham Hotspur FC.

    The application was opposed by Mr M. O'Connell and Ms P.H. O'Connell under Sections 3(1)(b) and 3(1)(c) of the 1994 Trade Marks Act. The opponents were retailers of unofficial sporting merchandise, in particular items such as hats, scarves, badges, flags and t-shirts, bearing the word Tottenham. The evidence showed that the opponents had operated in this fashion since 1969. It also showed that whilst local Trading Standards officers sought to prevent the unofficial use of the football club's trade marks, Tottenham Hotspur and Spurs, they did not try to stop the unofficial use of Tottenham per se, that word being the name of a part of the North London borough of Haringey and therefore not exclusively associated with the football team.

    The Hearing Officer dismissed the opposition on the following basis:

    • The limitation to the specification did not affect the issues to be considered.

    • If, according to the English High Court in Arsenal FC v Reed, the word Arsenal was distinctive, then so must be the word Tottenham. The Section 3(1)(b) objection was therefore dismissed.

    • The objection under Section 3(1)(c) was based on Tottenham being a geographical name. However, in order to be objectionable, Tottenham had to be seen (or likely to be seen) as an indicator of geographical origin; merely being the name of a place was not enough to fall foul of Section 3(1)(c).

    • There was nothing in the evidence that indicated that use of Tottenham in relation to the goods and services claimed would be seen as an indicator of geographical origin. In fact, the evidence indicated that the sign was much more likely to be associated with the football club. The fame of the club was likely to subsume any geographical association.

    • Tottenham's boundaries were defined, it could not expand outwards like a city.


    There was no evidence to show that Tottenham was a large industrial or commercial centre or was likely to become one. Further, it was unlikely to become a supplier of natural resources in the future. Tottenham would therefore not be seen as an indicator of geographical origin by the average consumer and the Section 3(1)(c) objection was dismissed.

    In the second case, an application by Hale Leisure to register the trade mark Barca in September 1997 for café, bar and restaurant services was opposed by the famous Spanish football club, FC Barcelona. The opposition was based primarily on Section 5(2) of the 1994 Act, given the club's ownership of CTM198598 for Barça covering inter alia entertainment services, and Section 5(3), in view of the football club's alleged reputation in the diminutive name Barça. The evidence showed that the applicant, which was partly owned by the pop star Mick Hucknall, had been operating a Barca bar in Manchester since May 1996 and that the bar had since become well established. It was one of a number of Manchester bars named after cities including Berlin and Prague.

    It was also accepted by the Hearing Officer that the football club had a reputation in Barça in the UK, but only in relation to football related goods and services. FC Barcelona were unable to establish a reputation in the mark in a wider area, such as entertainment services at large, to the Hearing Officer's satisfaction. Further, they could not provide any instances of actual confusion between the Manchester situated bar and their football operation.

    The opposition was dismissed. Even though most football clubs provided café, bar and/or restaurant services within their grounds, there was no suggestion that they also provided such services at locations divorced from their stadia. There was therefore no reason why a consumer would be confused into believing that the Spanish football club had set up a Barca bar or similar in the UK. Neither would they think that such a bar was in some way economically linked with the club.

    The final case involved the trade mark Roy of the Rovers filed by D. Jacobson & Sons in June 1998 for footwear. The application was opposed principally under Section 5(4)(a) of the 1994 Act by Egmont Fonden who claimed to own unregistered trade mark rights in Roy of the Rovers.

    As some older (UK) readers will know, Roy of the Rovers was a comic strip football story which ran in the Tiger comic from the mid '50s to the mid '70s. Its hero, Roy Race, became so popular that for about a further 20 years (until 1993) the many successes and rare failures of Roy and his team Melchester Rovers featured in an off shoot comic called, imaginatively, Roy of the Rovers. After the comic closed in 1993, however, Roy's appearances were limited to the occasional (retro) annual and a comic strip in the BBC's Match of the Day football magazine.

    On the evidence before him, the Hearing Officer refused to accept that the opponent was in a position to prevent the sale of Roy of the Rovers footwear by the applicant in a passing off action and therefore dismissed the opposition. He referred in his decision to a number of English Court cases dealing with alleged rights in fictional characters (Kojak, 1975 FSR 479; Wombles, 1977 RPC 99) and concluded that the English judiciary had been slow to accept that a protectable goodwill could exist in such (fictional) characters. In the present case, he found that the opponent would struggle to make out a claim to goodwill in relation to even printed matter and had completely failed to establish rights outside that area.

     

    Comment

    The Tottenham case reported above, when combined with the Advocate General's comments in the Arsenal v Reed case appears to put another nail in the coffin of the unofficial purveyors of sports merchandise who have been a feature of the British sporting scene for as long as balls have been kicked, thrown, hit, etc. Now that Tottenham Hotspur own a trade mark registration for Tottenham, we can expect them to try to use these rights to prevent the activities of their opponents, as well as other street traders, operating on match days outside their White Hart Lane ground.

    In the writer's view, such an action should be unsuccessful. Such unofficial street traders should have a defence to trade mark infringement under Section 11(2)(b) of the 1994 Trade Marks Act. Under that Section, a trade mark proprietor may not use his registration to prevent a third party from using, in the course of trade, "indications, concerning the kind, quality, quantity…of goods and services" provided such use is in accordance with honest practices in industrial and commercial matters. It is submitted that the retailer of an unofficial football scarf bearing the word Tottenham is merely indicating the kind of scarf that he is selling, which is a scarf that would be worn by a Tottenham football supporter. How else could this kind of scarf be indicated? These comments might not apply to the device marks owned by a football club, but they should certainly apply to the word Tottenham.

    As far as the Barca and Roy of the Rovers cases are concerned, they simply emphasise the fact that the owners of such marks should register them (and, if necessary because of non-use, reregister them) both for the goods and/or services of primary interest and for related merchandise and associated services. Certainly, it is surprising that a football club as big as FC Barcelona did not own and maintain in valid force trade mark registrations for their full and diminutive names in all or most of the 45 International classes.