In order to file a valid trade mark application in the UK, it is necessary to make a formal declaration that the trade mark is being used, by the applicant or with his consent, in relation to the goods or services covered by the application, or that the applicant has a bona fide intention that it should be so used.

Many applicants, however, file applications for marks where the aim is not to protect their trading but to obtain some form of unfair advantage relative to other traders. Examples are seeking to register words or phrases which other traders need to use (‘SELECTION BOX’ apparently used to be a popular pre-Christmas filing), or seeking to register brands which belong to someone else, or brands which take advantage of the fame of an individual or group.

The Trade Marks Act gives the UKIPO (UK Intellectual Property Office) strong powers to reject trade marks where the mark concerned is a descriptive term which should not be monopolised by one trader.

The UKIPO itself has considerably weaker powers where an applicant is seeking to register brands which belong to someone else, or brands which take advantage of the fame of an individual or group. In such cases, the UKIPO allows the application to proceed to the opposition stage and relies on the owners of earlier rights to take action.

In a recent case involving the two trade marks below, filed for in the name of Global Trademark Services Limited, the UKIPO rejected the applications at the examination stage, on the basis that the applications had clearly been filed in bad faith, to take advantage of the reputations of Thierry Henry and Ronaldo de Assis Moreira. On the face of it, this was not an unreasonable position to take, particularly in view of the fact that the ‘HENRY’ application featured a crest similar to that of Arsenal FC,  the ‘RONALDINHO’ application featured a crest similar to that of Barcelona FC and that Global Trademark Services was allowed an opportunity to file evidence from Henry and Ronaldinho that they had no objection to the applications, but failed to do so.

At this point, most trade mark applicants, even those that deliberately ‘sail close to the wind’ would probably have retired gracefully and withdrawn the applications, but Global Trademark Services Limited did not and have successfully appealed the decisions of the UKIPO examiner to reject the applications. This may seem strange to many readers, but Geoffrey Hobbs QC, the senior barrister appointed to hear the appeal, was firm in his view that the approach of the UKIPO was procedurally unacceptable, and legally deficient, for a number of reasons:

1. The UKIPO’s practice went against the grain of the policy decision recorded in the White Paper on Reform of Trade Marks Law (Cm 1203) published in September 1990, where the discretion of the UKIPO to refuse marks which make unauthorised use of the name or image of a real person, were deemed out of place in a modern trade mark law.
2. The law of England does not confer any general ‘right to a name’ or general ‘right of personal portrayal’.
3. It was difficult to uphold the UKIPO’s practice in this matter because of the way in which it overwrote relevant legal and procedural considerations.
4. The findings made by the UKIPO were in essence findings that entities other than the applicant had rights which conflicted with the applications, but such findings should only be made in opposition or invalidity proceedings and not at the examination stage.
5. Metaphorically speaking, the Registrar acted as “investigator-prosecutor-judge-jury-executioner” in relation to a serious accusation which he himself had raised against a person entitled to the benefit of a rebuttable presumption of innocence.

This decision represents a solid ‘win’ for Global Trademark Services Limited against the UKIPO – but the decision may not actually assist them. Henrick Larsson has already challenged Global Trademark Services’ registration of the mark below:

So, it seems highly likely the ‘HENRY’ and ‘RONALDINHO’ applications, which were published for opposition purposes on 17 June, will be opposed, and that Global Trademark Services Limited have won a battle, but not the war. If you would like any advice on trade mark protection, please get in touch to speak to one of our attorneys.