Background

It is no surprise that the ‘European Super League’ whose breakaway proposals rocked the world of Association Football across Europe in 2021 would have sought protection for its trade mark in the territories where it planned its activities. Accordingly, an international trade mark application for the below mark was filed on 13 October 2021 by European Super League Company, S.L. (the Applicant), designating countries including the US, Japan, India, and the UK:

Super League (Europe) Limited (the Opponent) – the organization behind Rugby League’s elite Super League, opposed the application under Section 5(2)(b), 5(3) and 5(4) of the Trade Marks Act 1994 relying upon the below earlier trade mark registration for a series of 2 marks, and which covers various goods and services in classes 9, 18, 25, 28, 35, 38 and 41:

The UKIPO Decision

The Opposition was defended, and after the evidence rounds concluded a Hearing took place on 18 January 2024 (at which the Opponent was represented by Wilson Gunn). The Decision (BL O/560/24) was handed down on 18 June 2024, and the following was decided in relation to the three opposition grounds:

Section 5(2) (Likelihood of confusion between the trade marks)

Comparison of goods and services, and assessment of distinctive character

In his comparison of the marks, the hearing officer found that the different positioning of the words ‘super league’ relative to each other in the two marks had little or no impact on the overall impression of the marks. The hearing officer also dismissed the Applicant’s argument that the phrase ‘super league’ is in widespread use, has no distinctive character, and no entity should be granted exclusive rights in the phrase. This finding was based on the assumption that the Opponent’s mark must have distinctive character by virtue of it having been examined and accepted for registration by a UK trade mark examiner. However, it was also stressed that the Applicant had not filed evidence in support of its claim that the phrase ‘super league’ is in widespread use.

The hearing officer accepted that the words SUPER LEAGUE are of inherently low distinctiveness but found that in both parties’ marks the words are dominant. The hearing officer rejected the Applicant’s arguments that the words should be ignored in the comparison of the marks, the comparison is between the marks as wholes. The Applicant did not file any evidence and the Applicant’s reference to the state of the register was also dismissed by the hearing officer on the basis that this does not show use of trade marks nor does it clarify whether consumers have been confused by the presence of such marks.

The hearing officer found the marks to be visually, aurally and conceptually highly similar.

As for the comparison of goods and services, the goods covered by the Applicant’s designation in class 25 and class 28 were found to be identical to those of the Opponent, by virtue of its earlier registration covering broad terms in those classes which wholly encompassed those of the Applicant (as per the principle set out in Gérard Meric v Office for Harmonisation in the Internal Market (OHIM), Case T- 133/05). The Applicant’s services were variously found identical or similar to some degree to those covered by the earlier trade mark.

The parties’ goods/services were found to be identical or at least similar.

The Opponent’s evidence of use was deemed to provide the earlier mark with enhanced distinctive character to a medium level.

Decision under Section 5(2)(b)

Overall, the decision was that there is a likelihood of confusion between the trade marks under Section 5(2)(b) TMA, based on the following factors:

• The marks were highly similar visually, aurally and conceptually
• The goods and services are largely identical, and at least similar
• Case law allows that a great degree of similarity between goods may offset a lesser degree of similarity between marks (and vice versa)

It was accepted that the words SUPER LEAGUE are of inherently low distinctiveness, but the Opponent’s evidence of use enhanced the distinctiveness to a medium level. Furthermore, the Applicant had not filed any evidence to show that anyone other than the Opponent was using the phrase ‘super league’.

The Applicant’s argument that the goods and services are targeted at different consumers since the Opponent is concerned only with Rugby League failed because neither party’s specification contained any limitation.

The hearing officer found direct confusion through imperfect recollection. This was based on the shared element ‘super league’ was held to be the dominant element in both marks, and the identity/similarity of goods/services involved.

The opposition succeed in full under Section 5(2)(b).

Summary

Because of the Opponent succeeding in full on the 5(2)(b) ground, in the interests of procedural economy it was agreed that there was no need for a Decision on the 5(3) and 5(4) grounds.

However, the hearing officer provided brief comments on both grounds. The hearing officer expressed doubts that the Opponent’s evidence was sufficient to prove a reputation for the 5(3) claim. In respect of the 5(4)(a) claim the hearing officer commented that following its success under 5(2), the Opponent would be in no better position were it to succeed in the claim under 5(4).

The Decision is a blow to the Applicant’s position in the UK, an appeal is possible by 16^th July. We will keep you updated.

Wilson Gunn represented Super League (Europe) Limited.

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