Further success for Leicester City
|Applicant's mark||Opponent's earlier mark|
Class 16 - Printed matter; photographs; stationery; instructional and teaching material.
Class 41 - Education; providing of training; entertainment; sporting and cultural activities.
Class 16 - Printed matter; printed publications; books, magazines, programmes, albums, diaries and calendars; book markers, greeting cards, wrapping paper, playing cards, place mats and beer mats; photographs, posters and pictures; paper, writing implements, drawing implements and pencil cases; gift vouchers; instructional and teaching materials.
Class 41 - Organization of sporting events, competitions, games, shows, parties and conferences; presentation of live performances; physical education; sports tuition and training; provision of sporting and recreation facilities; management of sports facilities; rental of sports equipment and stadium facilities; information relating to sports entertainment or education provided on-line from a computer database or the Internet.
Leicester City Football Club ('Leicester City') gained global recognition in 2016 when they historically won the Premier League trophy despite being considered 5000-1 rank outsiders at the start of the season. This was a modern sporting success akin to David's triumph over Goliath. It also meant that the previously unfancied Midlands football club became an internationally recognised brand in the world of football leading to a huge increase in the global sale of merchandise bearing the club name, crest, nickname (the Foxes) or abbreviation of the club name (LCFC). Given this context, it is unsurprising that Leicester City would take a robust approach to brand protection.
This case involves an application by Leeds City Football Club Limited (the company that is behind a lower tier football club, Leeds City FC, that last competed in Division 3 of the West Yorkshire Association Football League) (the 'Applicant') of a graphical trade mark covering various goods and services in classes 16, 25, 26 and 41 (the 'Later Mark' – above left).
The company behind Leicester City, Leicester City Football Club Limited (the 'Opponent'), opposed the Later Mark on grounds based on sections 5(2)(b), 5(3), 5(4)(a) and 3(6) of the Trade Mark Act 1994.
The claims based on sections 5(2)(b) and 5(3) relied on the Opponent's earlier UK trade mark registration number 2251624 for the word 'LCFC' (the 'Earlier Mark').
The section 5(4)(a) claim was that the application for the Later Mark is contrary to the law of passing off, given that the Opponent has prior unregistered rights in LCFC for “goods and services including, but not limited to: Printed matter, photographs, stationery, instructional and teaching material; clothing, footwear, headgear; badges for wear, not precious metal; and education; provision of training; entertainment; sporting and cultural activities”.
The bad faith claim under section 3(6) was based on arguments that:
- The Later Mark was a redesigned version of the crest of a football club (also called Leeds City Football Club) that has been defunct since around 1914-18. The Opponent argued that there was no reason for the redesign apart from giving the Applicant an excuse to increase the size and prominence of the letters 'LCFC'.
- The Leeds City Football Club that is in current existence uses a completely different crest to that which makes up the Later Mark.
- The application for the Later Mark was filed relatively straight after Leicester City won the Premier League, something that the Opponent felt 'cannot be a coincidence'.
In comparing the goods and services covered by the two trade marks, the Office found that the parties' goods are identical and that their services are identical or at least highly similar.
It held that the average consumer of the goods at issue would be the general public, who would predominantly purchase the goods through shops (or stalls) or via the internet, and when selecting the goods would therefore predominantly rely on visual considerations (but with aural considerations sometimes also playing a part) and would only pay a normal degree of attention. In respect of the services, it found that the average consumer would also include businesses who would pay an above average level of attention.
The Office considered that the overall impression and distinctiveness of the Earlier Mark lies in the four letters 'LCFC'. The Later Mark, despite having some distinctive graphical elements (such as the owls, the shield, the star and the football), had the same four letters 'LCFC' playing a central role.
It concluded that the Earlier Mark was inherently distinctive to a normal degree, but that the level of inherent distinctiveness may fall below that level insofar as the mark may be seen to relate to a football club. This is because the last two letters 'FC' would be understood by the majority of the average consumers to mean that the mark relates to a football club.
It then compared the two marks and concluded that they are:
- visually similar to a medium degree given that the central and dominant element of the Later Mark contains the whole of the Earlier Mark;
- aurally identical in so far as most of the average consumers would refer to both marks as the 'LCFC' marks, or that, to the extent that average consumers would refer to the Later Mark by also reading out the smaller text (ie by saying 'LCFC Leeds City Football Club'), then aurally similar to a medium to high degree; and
- conceptually similarity to a medium to high degree given that the average consumer would take the LCFC element as the predominant feature of both marks and would conclude that both marks related to a football club with the initials 'LC'.
The Office relied on the case Comic Enterprises Limited v Twentieth Century Fox Film Corporation  EWHC 185, (in which it was held that “It is not necessary for infringement of a registered trade mark to show that there is 'right way round confusion'. All that is required is a likelihood of confusion.") and concluded that there was a likelihood that a consumer who saw the Later Mark first would be confused as to the origin of the Earlier Mark.
As such, the opposition of the Later Mark succeeded in its entirety. The UKIPO did not therefore think it was necessary to consider the claims under sections 5(3) and 5(4)(b).
In respect of the claim under section 3(6), it considered that there had been no evidence of bad faith by the Applicant when applying for the Later Mark. It held that the fact that the Later Mark included the full name of the club ('Leeds City Football Club') and contained elements of the city of Leeds coat of arms, defeated an allegation of bad faith. Moreover, Mr Dixon of the Applicant had shown, through a witness statement he had provided during the opposition proceedings, that he had had historic involvement in Leeds City Football Club, and had incorporated the Applicant in 2003, 13 years before Leicester City's Premier League triumph.
Despite, the Opponent failing to prove bad faith however, this was another victory for Leicester City (or a least their brand protection team) in the forum of a UKIPO opposition proceeding.
Case ref: O/755/18 Andi Terziu