The FA opposed an attempt by “Jules Rimet Cup Ltd” to register a football-kicking lion cartoon and the words “World Cup Willie” as a UK trade mark. But how could the FA rely on their lion namesake, when it hadn’t been used for over 30 years? Jessica Stretch referees.
Who: Jules Rimet Cup Ltd. V The Football Association Ltd.
When: 18 October 2007
Where: High Court
Law stated as at: 2 January 2008
Jules Rimet Cup Ltd ("JRCL") applied to register WORLD CUP WILLIE (word) and a device mark.
The Football Association ("FA") announced its intention to oppose the applications based on its prior trade mark and common law rights in "World Cup Willie", the mascot for the 1966 World Cup.
In response JRCL commenced proceedings to obtain a declaration that its trade mark applications (the "Applications") could not be opposed by the FA. The FA counterclaimed for trade mark infringement, copyright infringement, passing off and alleged that the Applications were made in bad faith.
Mr Roger Wyand, sitting as deputy judge, held that there were two grounds for refusing to register the Applications:
1. Section 5(4) of the Trade Mark Act 1994 (the "TMA") prevents registration of a mark where there is an earlier right such as copyright, design right or a right under the law of passing off. In this case the mark WORLD CUP WILLIE and a cartoon lion image had been used by the FA in 1966 with the result that JRCL's use of the Applications would constitute passing off.
JRCL had argued that the FA abandoned goodwill arising from "World Cup Willie" in 1970 when it stopped licensing the mark and allowed its trade mark registrations to lapse. The FA claimed that "World Cup Willie" was not abandoned but rather put to one side until such time that it became relevant again. The deputy judge accepted the FA's argument finding that the FA had not abandoned goodwill in the mark finding that the goodwill had survived during the 40 years since first use of the mark. In particular, he relied upon sales documents contained in JRCL's disclosure referring to "World Cup Willie" as one of the "most valuable sports rights in the UK". He also noted that there were occasional references to "World Cup Willie" in the press and approaches to the FA by potential licensees. Consequently there was enough evidence to show that there was residual goodwill sufficient for the FA to succeed in an action for passing off.
2. Section 3(6) of the TMA prevents registration of a mark where the application has been made in bad faith. JRCL's Application was deemed to be in bad faith because it knew that there was goodwill in "World Cup Willie". The deputy judge held that this was dishonest, judged by the ordinary standards of honest people. He would not accept JRCL's defence that they obtained legal advice without their disclosure of that advice and the surrounding circumstances.
In relation to alleged copyright infringement, the deputy judge held that whilst there were similarities due to "subconscious copying", the device mark did not reproduce a substantial part of the FA's device and consequently JRCL had not infringed copyright. However this did not in the event have any impact on the eventual outcome.
Why this matters:
This case provides a useful exploration of the creation and survival of goodwill. Of particular interest to brand owners is the fact that, in certain circumstances, goodwill in trade marks can last for 40 years even if in that time the mark is barely used. It is also interesting that the strongest evidence of goodwill was found in documents produced by JRCL acknowledging the value of the brand. When a company is devising new brands it should be careful not to assume that there are no rights in pre-existing brands that have not been used for a number of years.
It should also be noted that taking legal advice cannot be used as a defence against a bad faith trade mark registration unless the party concerned is willing to provide that advice and the surrounding circumstances.