| TRADE MARK — Registration — Distinctive character — Sporting emblem peviously used in non trade mark manner to indicate team loyalty — Whether previous use preventing registration as trade mark — Trade Mark Act 1994, s 3(1)
Score Draw Ltd v Finch
Ch D: Mann J: 9 March 2007
The fact that a mark had been used in a non trade manner did not necessarily prevent its being used as a trade mark. However, its prior use might have robbed it of its power to be distinctive of trade origin in which case its registration would be barred by s3(1) of the Trade Marks Act 1994.
Mann J so held in the Chancery Division when allowing an appeal by the appellant, Score Draw Ltd, from a decision of Hearing Officer Ann Corbett of 3 August 2006 dismissing its application for a declaration that the registration of the mark in suit by the respondent, Alan James Patrick Finch, was invalid.
The mark in suit was the badge of the CBD, which had formerly been the governing body for sport in Brazil, and had been used by the Brazilian football team between 1914 and 1971. As such it appeared on the shirts of that team in various important football matches, and had been borne on the shirts of important historical football figures such as Pele and Jairzinho. The respondent was the registered proprietor of the mark and had licensed TOFFS Ltd to use it on replica football clothing. The appellant, which also used it on replica football clothing, had applied for a declaration that the registration of the mark was invalid, on the grounds, inter alia, that it was devoid of distinctive character and, accordingly, its registration was barred by s 3(1)(b) of the Trade Marks Act 1994.
MANN J said that it was necessary to consider whether the use of the badge had become so associated with the Brazilian football team or former teams that it was not capable of being rendered distinctive of the person putting on the market a shirt bearing it. The evidence showed that the CBD badge has been used to indicate team loyalty or affiliation. Until 1971 its purpose had been to function as the emblem of the CBD and the Brazilian football team. Since then it had been used to denote the historical football teams. Its use on replica football kit by TOFFS and the appellants and others clearly demonstrated that. The only purpose of the badge was to give authenticity to the shirts. The mere fact that the badge had not been used as a trade mark before did not mean that it could not acquire that use. However, its actual use had caused it to acquire a familiarity which meant it would inevitably be associated, by the relevant public, with the historic football teams. That use had robbed the badge of is power to be distinctive of trade origin.
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