UK COURT DIARY

NOSTALGIA SCORES as Team Logo Marks Defeated

Fan loyalty can long outlast the object of its affection, and an evocative word or symbol may remain commercially valuable long after a celebrity has drifted into the sunset.

Sports teams are a case in point: they attract tremendous public support, and when teams re-design their logos they may find that fans remain strongly attached to the old versions, which symbolise the success of the team in bygone years. As a result, a market in t-shirts, hats and other memorabilia bearing the old marks often remains.

Where a team itself has not protected its old logos as trade marks, may one merchandiser exclude others from the profitable replica kit trade by registering them himself? This was the question at issue in a recent High Court case, Score Draw Ltd. v Alan Finch [2007] EWHC 462.

 

THE MATCH BEGINS

Alan Finch, an English individual, had registered the former logo of the Brazilian national football team as a trade mark in the U.K. The logo in question had been used by Brazil between 1914 and 1971, when the team included famous players like Pele, Garrincha and Rivelino and enjoyed substantial international fame. Mr Finch licensed its use to a company called TOFFS Ltd. who sold shirts bearing the logo.

A rival replica kit vendor, Score Draw Ltd., challenged the validity of the registration, claiming that the mark did not denote trade origin but rather merely symbolised the former Brazilian team. Score Draw argued that it and others had used the logo for years to denote football kit designed to be an exact replica of that worn by the Brazilian team between 1914 and 1971. The logo conveyed a nostalgic and functional message in respect of such merchandise—indeed, it created the replica effect. As such, the logo did not communicate trade origin, and was therefore insufficiently distinctive for registration.

At first instance, the UK-IPO rejected Score Draw’s arguments, finding no evidence that it and others had regularly used the logo in a nostalgic sense. Tersely dismissing the distinctiveness arguments, the hearing officer observed that the unregistered logo had been “there for the taking.” The claim for invalidity failed.

 

SCORE DRAW WINS IN EXTRA TIME

On appeal to the High Court, however, Score Draw clinched a resounding victory.

The Court rejected the hearing officer’s approach to Score Draw’s evidence, finding that she had misinterpreted key aspects and failed to give full consideration to the arguments on distinctiveness. The Court was satisfied that the evidence had shown regular use of the logo by Score Draw on replica football kit since 1994 as a symbol of the former Brazilian team and, indeed, that others had used it in the same way. Most pointedly, TOFFS Ltd. had used the mark regularly as part of the overall replica look of its shirts, which it sold by reference to the TOFFS brand name. The Court found that as far as the TOFFS sales were concerned, the mark in use had been TOFFS; the team logo was only there as ornamentation on the goods, symbolising their replica status.

The Court considered it perfectly possible for a trade mark to communicate more than one message. A team logo might, for example, communicate trade origin when used by the team, as well as symbolise replica clothing or fan merchandise when used by others. However, there were some cases where the replica or nostalgia message had become so firmly established that it effectively supplanted the trade mark function. In such cases, the logo would no longer be capable of denoting trade origin. Taking into account the many years of purely replica use in the U.K., the Court found that to be the case here.

The registration was declared invalid on the basis that the mark was not distinctive and denoted a characteristic of the goods, namely that they were replicas of the football kit worn by the Brazilian national team between 1914 and 1971.

 

COMMENT

The result in Score Draw is compelling reading for sports teams and the merchandisers who follow in their wake.

For sports teams, it remains common sense to protect their names and logos, including old versions and re-designs, as registered trade marks early, and to take steps to ensure proper trade mark use. While it is virtually impossible to control all merchandising, teams can at least protect against third-party challenges later by ensuring that the clear and consistent message the trade mark sends, when they use it, is one of origin. Failure to do this can leave a team open to a claim that even if the name or logo was once registrable, it has become revocable as descriptive of replica or fan merchandise due to the activity or inactivity of the proprietor.

Where teams do not take these measures, attempts to protect a mark later on may find that the horse has already bolted. If a team applies to register a mark only after merchandisers have built up a lucrative trade in replica merchandise and memorabilia, it can expect a spirited fight by those merchandisers against the potential loss of their profitable trade.

Score Draw did not address infringement or defences, and questions remain as to when, if ever, merchandisers of replica sporting kit may have a defence to trade mark infringement on the basis that the team names and logos denote a characteristic of the goods, namely that they are replicas. This area of the law remains uncertain following the judgment of the ECJ in Adam Opel AG v Autec AG, holding that use of a registered mark on models or miniatures could infringe where the use was capable of affecting the essential origin-indicating function of the mark (Case C-48/05; see last spring’s Make Your Mark). The guidance in Adam Opel indicates that teams who own registered trade marks for their brands are likely to have the upper hand, but how far the courts will let them go in challenging merchandisers is likely to depend on the individual facts of each case.

One message at least seems clear. Claiming ownership of the team logos on which a merchandiser’s business is built is unlikely to win them points before the courts. Where team names or logos indicate fan affiliation and the goods sell for that reason, one merchandiser is not entitled to monopolise the name or logo, regardless whether the team or anyone else has troubled to do it itself.