What does RFC mean to you? An initialism for ‘Rugby Football Club’, so thought Mr. Russell Campbell, a football clothing retailer from Glasgow with a vested interest in preventing the registration. Mr. Campbell filed an opposition to Rangers FC’s series trade mark application for RFC & R.F.C on the basis that the mark was devoid of distinctiveness, descriptive and customary in the English language as an initialism meaning ‘rugby football club’.
His opposition was initially rejected by the Hearing Officer and subsequently appealed to the Appointed Person, who ruled that the hearing officer had not given full consideration to the grounds of the opposition, nor enough consideration to the use of RFC as an initialism for Rugby Football Club. The matter therefore headed back to the tribunal for determination by a new hearing officer, who considered Mr. Campbell’s grounds for opposition in turn in his judgment.
With regard to 3(1)(c) (the ‘descriptiveness’ objection) , the Appointed Person agreed that RFC is commonly used as an abbreviation to describe the services of rugby football clubs, but the abbreviation could not be seen as descriptive of the goods applied for in classes 14, 24 and 25. What characteristic of these goods could the letters RFC possibly be describing?
With regard to 3(1)(d) (the ‘customary language’ objection), he argued that whilst RFC is commonly used as an initialism for ‘rugby football club’, its use on its own is not customary. The evidence submitted by Mr. Campbell demonstrated that RFC is always used in conjunction with the name of the place where the rugby club is based.
The Appointed Person also applied the same reasoning in dismissing the 3(1)(b) (‘lack of distinctiveness’) opposition ground. Just because people may be familiar with the initialism RFC in relation to rugby, this should not automatically equate to non-distinctiveness. The fact that RFC is almost exclusively married with a place name means that when it is not, this would be seen as unusual and lend the mark distinctive character.
In view of the above, Mr. Campbell’s opposition was dismissed and the mark was allowed to proceed to registration. Mr. Campbell was left £800 out of pocket to boot.
As well as being a handy reminder of how to assess distinctive character, this case shines a spotlight on the efficacy (or lack thereof) of limitations to specifications of goods and services. The first hearing officer was aware of the rugby initialism issue and Rangers had added the limitation “all of the aforesaid goods relating to or for the promotion of football (soccer)” at the end of the list of goods in each of classes 14, 24 and 25. The second hearing officer considered the limitation meaningless and ineffectual, as it did not exclude the use of the letters RFC from a context in which they could or would be seen as an abbreviation for ‘rugby football club’. After all, how does one differentiate a tiara used in relation to the support of a football club from a tiara used in any other context?