Leicester City victorious in TM opposition against football minnows
Leicester City Football Club grabbed an IP victory yesterday when the UK Intellectual Property Office (IPO) allowed the club’s opposition against a football-related trademark to prevail.
Leicester City, currently in England’s top-level football league, the Premier League, had opposed the registration of two trademarks by Leeds City Football Club, a non-professional outfit whose first team play in the West Yorkshire Association Football League.
In June last year, Leeds City applied to register the two trademarks, which feature a shield flanked by an owl either side and include the acronym “LCFC”. The trademarks cover classes 16 (which includes printed matter); 25 (clothing and footwear); 26 (badges); and 41 (education and provision of training).
Relying on its ownership of a UK trademark for ‘LCFC’ (number 2,251,624), Leicester City opposed the trademark applications on four grounds.
First, the club claimed that the applied-for trademarks were similar to its own and cover identical goods.
The application is “for what would be recognised by most average consumers to be a typical football club crest. This is because the trademark comprises animals on each side of a shield device with a football located directly above the shield”, said Leicester City.
Matthew Williams, on behalf of the IPO, found that the goods and services covered by the trademarks were identical.
“The marks differ notably in that the applicant’s mark has large and striking device elements, entirely absent from the opponent’s earlier mark. However, the opponent’s earlier mark features in its entirety in the applicant’s mark, occupying a central and striking position,” said Williams, before finding the marks to be visually similar.
Williams also found the trademarks to be aurally and conceptually similar to a degree between medium and high.
He concluded that there is a likelihood of confusion, finding that Leicester City’s opposition succeeded in full.
While Leicester City alleged that the applied-for marks would “ride on the coat-tails” of its own reputation and that use of the trademarks would be contrary to the law of passing off, Williams refused to consider the claims.
However, Williams said the accusation that Leeds City had applied for the trademarks in bad faith should be dealt with.
Leicester City claimed that as the trademarks are a redesign of the original Leeds City badge, once used by a now defunct club of that name, the redesign is solely to ride on the coat-tails of Leicester City.
“I note the various points of suspicion put forward by the opponent, but it seems to me that the fact that the applicant’s mark includes the full name ‘Leeds City Football Club’, along with the ordinary acronym of that name—‘LCFC’—is quite sufficient to defeat an allegation of bad faith,” said Williams.
After concluding that the claim of bad faith failed, the IPO ordered Leeds City to pay Leicester City £1,600 ($2,042).
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