If asked what the letters stand for, what would your answer be?
This might be starting to sound like the sort of riddle one finds in a terrible Christmas cracker but it is in fact a question that has been asked (seriously) of the UK Intellectual Property Office (“IPO”) twice, thanks to a disagreement between Rangers Football Club and one Mr Russell Campbell, a rugby fan.
The disagreement arose out of Rangers’ application to register trademarks for “RFC” and “R.F.C.” for a wide variety of goods in classes 14 (jewellery), 24 (textiles), 25 (clothing, headgear and footwear). Mr Campbell opposed this application arguing, in short, that “RFC” is commonly understood to be an abbreviation of “Rugby Football Club”, and not Rangers Football Club (indeed one may also wonder what Reading FC might have to say about that).
Rangers subsequently tweaked its application and narrowed its scope by limiting each list of goods only to those “relating to or for the promotion of football (soccer)”. The IPO originally considered the opposition in 2014 and allowed the amended application to proceed. Mr Campbell appealed. A few weeks ago, that appeal was decided by the Appointed Person, who, in summary, found that the Hearing Officer had not given sufficient weight to the significance of the letters RFC as an abbreviation for ‘rugby football club’. He therefore allowed the appeal and remitted the decision for determination by a different Hearing Officer. In this case, Rangers’ amendment to include a general limitation to an otherwise wide ranging list of goods (by reference to the promotion of the particular sport of football) was not sufficient to permit such a broad trade mark application, as it was possible that this could still encompass contexts in which the letters would be seen as indicating ‘rugby football club’. It remains to be seen whether the IPO will accept an application with a further revised limitation on the list of goods.
Rangers is by no means unusual in making this sort of application. There are endless examples of sporting trade marks, both the expected (see Arsenal, Sir Alex Ferguson, and Cristiano Ronaldo’s “CR7” to name but a few), as well as the more unusual or ‘non-traditional’ (see Jonny Wilkinson’s kicking stance, the shape of the Ryder Cup trophy, and Damon Hill’s eyes).
Given the monopolistic protection provided by registered trade marks, the licensing opportunities they offer, and the vital importance of brand protection and strategy, it is unsurprising that many sporting individuals, clubs, and other brands seek to obtain and maintain a broad trade mark portfolio. Broadly speaking, a successful registration simply requires a mark which is capable of graphical representation and which is used to differentiate a person’s goods and services from those of others (inevitably this can be more difficult in relation to an acronym such as RFC). The Rangers case, however, is a reminder to brand owners of the importance of carefully considering the scope of protection sought in an application and, in particular, the need to define the goods and services applied for as clearly as possible.
For more on trade marks and intellectual property, see here.