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Important trade mark win for Leicester City FC

The importance of trade mark protection cannot be overstated and, as trade mark attorneys we see cases which highlight this time and time again. In addition to registering trade marks, it is important to enforce your rights when required. A recent example of this is the opposition that was filed by Leicester City Football Club (Leicester City FC) against the Leeds City Football Club Limited’s (Leeds City FC Ltd) trade mark application.

Leicester City FC’s English Premier League win in 2016 was one of those riveting stories that captured the attention of many, of an underdog triumphing over the odds. The club shot to prominence and the public started seeing more of the club’s trade marks and logos.

Elsewhere, the original Leeds City football club, established in 1904, had used as its badge, the coat of arms of the city of Leeds, which features three owls and a Latin term. This club dissolved in 1919 and was replaced by Leeds United, who are currently playing in the second tier of the English Football League. Leeds City FC is a relatively new club, which was formed in 2006 and competes in Division 3 of the West Yorkshire Association Football League. Leeds City FC Ltd is a company which we understand to be unrelated to this football club.

On 1 June 2017, Leeds City FC Ltd applied to register in the UK a figurative trade mark for various goods and services including clothing and badges.

Leeds City FC Ltd’s logo

Leeds City FC's logo application

Grounds for opposing a trade mark application

Leicester City FC’s main ground for opposition against this application was based on its prior UK trade mark registration for LCFC covering, amongst others, goods and services which are identical or similar to those covered in Leeds City FC Ltd’s application.

In a bid to throw everything but the kitchen sink at Leeds City FC Ltd, Leicester City FC claimed the following;

• that Leeds City FC Ltd was taking unfair advantage of its reputation in LCFC

• that Leeds City FC Ltd’s application was contrary to the law of passing off, which is based on Leicester City’s goodwill in the mark LCFC

• that Leeds City FC Ltd had filed the application in bad faith, as it had redesigned the logo to prominently feature the acronym LCFC after Leicester won the Premier League.

In a case such as this, where there are so many grounds and issues to be considered, it is quite puzzling that Leeds City FC Ltd did not appoint legal representation!

The hearing officer at the UK Intellectual Property Office (UKIPO) decided in favour of Leicester City FC on all of the claims raised, except the bad faith claim.

Keep your trade mark protection up to date

The strongest ground against Leeds City FC Ltd’s application was Leicester City FC’s prior registration. The conflict with the registered trade mark was proven most easily because the presence of LCFC in the Leeds City FC Ltd’s crest was sufficient to bring them into conflict with Leicester City FC’s mark. Apart from details of its registration, Leicester City FC was not required to submit any other evidence. This emphasises again the need to keep your trade mark protection up to date as although Leicester City FC relied on a number of grounds, they won based entirely on their trade mark registration with minimal evidence and therefore, relatively little cost to prove its case.

Reputation and passing off evidence was not considered

A case based on reputation and passing off is usually established by submitting a substantial amount of evidence relating to extensive use, which Leicester City FC managed to do for the LCFC mark. However, in view of the success of the ground based on the registered trade mark, the hearing officer did not consider these grounds. Even though in this instance it turned out to be unnecessary, it was a good precaution to take in view of the importance of this case to Leicester.

Difficult to prove bad faith

A bad faith claim is one of the most difficult grounds to prove which is why there are only a handful of cases in which it has been successful. A person is presumed to have acted in good faith unless proven otherwise. Leicester City FC claimed bad faith primarily because Leeds City FC Ltd applied to register its trade mark shortly after Leicester City FC won the historic premier league title, and it redesigned the crest to include the LCFC acronym. The hearing officer noted that this is a serious allegation and therefore considered the merit of the allegations made by Leicester City FC. However, despite Leicester City FC’s suspicions, the hearing officer did not agree that they had proven that Leeds City FC Ltd had applied to register the trade mark in bad faith. The hearing officer considered the fact that Leeds City FC Ltd included the full name “Leeds City Football Club” along with LCFC was sufficient to defeat an allegation of bad faith.

Get help from a Chartered Trade Mark Attorney

In addition to highlighting the importance of registering your trade mark and possibly having trade mark watches in place to identify potential conflicts and infringement, this case also highlights the importance of appointing legal representatives. Leeds City FC Ltd misunderstood the legal grounds that were asserted against them and did not respond properly. In addition, they also made errors in the formatting of their evidence and missed deadlines, which did not help their case.

Sri Dhevi Santhana Dass is a Chartered Trade Mark Attorney at AdamsonJones IP Ltd, Sri provides advice on a wide range of trade mark issues including advice on trade mark availability and registrability; filing and prosecution of UK, EU, and international trade marks; brand management; protection reviews and other trade mark related matters. For queries about trade marks please contact Sri on +44 (0)116 478 7100 or email sri.dass@adamson-jones.co.uk.

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