Premier League shoots and scores in trademark opposition
England’s top tier football division, the Premier League, has successfully opposed trademark applications relating to a video game competition at the UK Intellectual Property Office (IPO).
In October 2016, sport consultation company International Group Management Limited applied to register two trademarks. One consisted of a black circle with the words ‘Esports Premier League’ in white over the circle, while the other applied-for trademark was the same but with black lettering over a white circle on a black background.
The applied-for trademarks are for services in class 41, called “Organisation and regulation of video gaming competitions, none relating to association football”.
The Premier League opposed the applications on the grounds that they are visually similar and relate to the same goods and services as five of its earlier trademarks, including the words ‘Premier League’ (UK 2,147,888); ‘Fantasy Premier League’ (EU 12,039,251); and the head of a lion next to the words ‘Premier League’ (UK 3,148,844).
The ‘888 trademark is subject to the disclaimer: “Registration of this mark shall give no right to the exclusive use, separately, of the words ‘Premier’ and ‘League’.”
According to the Premier League, its earlier trademarks have a reputation as a result of extensive use, and the applied-for trademarks would cause confusion and take unfair advantage of the earlier trademarks.
International Group Management admitted that the ‘Esports’ element of its applied-for marks is descriptive of competitive video gaming but argued that competitive video gaming does not compete with traditional sports. It also claimed that the term ‘Premier League’ is non-distinctive and is in common use to denote top level competition.
Furthermore, the Premier League denied that ‘Premier League’ is the dominant and distinctive element of the contested trademarks. On May 22, Allan James, on behalf of the IPO, said that the applicant’s exclusion of services relating to football is “not sufficient to avoid confusion”.
He said that the words ‘Premier League’ in the contested mark would have caused a significant portion of the public to expect the services to include video gaming competitions based on the Premier League’s online competitions.
“In these circumstances, average consumers would regard the words Premier League as indicating that there is an economic connection between the users of the marks,” said James.
“The inclusion of the words ‘Esports’ (and/or the device element) in the contested mark would not have been sufficient to counter this impression,” James added, saying there would be a likelihood of indirect confusion.
James ruled in favour of the Premier League and cancelled the applications. The parties must bear their owns costs.
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