In a game lasting much longer than 90 minutes, Rangers have beaten the opposition, a seller of unofficial merchandise, and won by successfully registering a trade mark for “RFC”.
The application to register the RFC trade mark was first made back in March 2013. The trade mark was to cover jewellery, ornaments, interior decorations, furniture and clothing, all in relation to the “promotion of football”. The addition of the qualification “promotion of football” was to overcome a suggestion by the examiner at the initial stage of examination that RFC was an abbreviation of Rugby Football Club and was intended to avoid any objection from rugby clubs and fans to the club obtaining a monopoly for RFC. With that amendment, the trade mark was accepted by the examiner and published to third parties to oppose the application.
The application was opposed by Russell Campbell, a seller of unofficial Rangers merchandise. Essentially the challenge was that RFC had no distinctive character, a prerequisite to registration, was descriptive and was commonly used by rugby clubs as RFC was an abbreviation of “rugby football club”. The addition of the qualification that the mark only related to football did not, in his view, assist Rangers.
The opposition was rejected by the hearing officer (Rangers 1 – 0 Campbell) but Mr Campbell appealed. In August 2016, the Appointed Person allowed the appeal on the basis that the hearing officer had failed to carry out a full examination of the objections, particularly that the hearing officer had not fully considered RFC as an abbreviation of rugby football club. The case was sent back to a hearing officer for another attempt (Rangers 1 – 1 Campbell). In July 2017, a second hearing officer also rejected the arguments put forward by Mr Campbell (Rangers 2 – 1 Campbell). Mr Campbell then appealed that decision.
The appeal decision
The appeal was again based on the fact that RFC was an abbreviation of “rugby football club” so lacked distinctiveness and should not be registered. However, this time Mr Campbell argued that Rangers was also acting in bad faith. The latter was a new ground of opposition that had not been considered by the first hearing officer or during the first appeal and was rejected by the second hearing officer on the basis that it had not been raised before and there was no reason to allow a new argument to be added to the the original opposition.
Mr Campbell challenged the hearing officer’s refusal to permit him to amend his opposition to include a bad faith argument. The hearing officer does have case management powers and discretion to permit amendments but the challenge was refused here.
Mr Campbell’s challenge was therefore restricted to his argument that RFC lacked distinctive character and was descriptive as the term RFC has been used generally to describe rugby football clubs since the late 19th Century.
In August 2018, the Appointed Person refused the challenge to the trade mark. In relation to the challenge that the mark was an abbreviation of rugby football club, the Appointed Person observed that RFC was rarely used alone, it was almost always used in conjunction with the club name. If a rugby club was to use the term RFC in connection with its name (e.g. Aberdeen RFC) the “RFC” part is not dominant so it would not be infringing the mark. The registration would also not prevent general use of RFC in connection with rugby given the restriction that the mark only applied to football.
Does this prevent the sale of unofficial merchandise?
The game has finished 3-1 to Rangers and will be welcomed by sports clubs and sports brands owners who invest considerable time and money in clubs and official merchandise. The Appointed Person drew particular attention to the motivation behind the opposition. Mr Campbell did not intend to use the mark in relation to rugby. He was opposing the trade mark because it would harm his business selling unofficial Rangers football merchandise.
Courts have consistently found that football clubs can registered their names as trade marks meaning that they can prevent the sale of unofficial merchandise. In the case of Arsenal v Reed an unofficial seller of Arsenal merchandise was sued for trade mark infringement. He clearly displayed signs at his stall stating that the merchandise was unofficial. He also argued that the name was used to show allegiance to the club and not as an indicator of origin. The Court of Appeal found that this did not matter.
The important point was that the use of the trade mark ARSENAL by an unofficial seller meant that there were goods in circulation that bore the Arsenal mark that did not come from Arsenal. This would jeopardise the function of the mark which is to show that the goods originate from the trade mark owner. This does not prevent the mark being used in a purely descriptive sense provided that the use does not suggest that the goods themselves originated from the trade mark owner.
Mr Campbell also argued that if the trade mark was registered, anyone found to be using it could be committing a crime. The Appointed Person correctly said this was not a ground of opposition but a consequence of registration. The point being that, if the mark meets the tests for registration, then it should have all of the protection of a registered trade mark including possible criminal sanction for infringement.