Good news for the FA that has nothing to do with Messers Rooney or Owen.
At the end of April, the FA defeated an opposition to register the ‘three lions’ shield, together with the words THE FA for a wide range of goods and services.
The FA applied to register a mark consisting of the England ‘three lions’ shield, with the words ‘The FA’ in a black box above the shield for a wide range of goods. Henkel opposed the application in relation to goods in Classes 3 (toiletries etc), 5 (medicated toiletries etc) and 21 (items related to cleaning of the body and hygiene etc), based on its UK registration of the word Fa in the UK in those classes.
The opposition was refused:
*Henkel’s mark benefited from enhanced distinctiveness. Henkel claimed that the mark was well known in Europe, but the hearing officer found that reputation in Europe was not relevant before the UK Trade Marks Registry. Even if it had been, Henkel had not submitted sufficient evidence to show reputation in any particular country, let alone the whole of Europe. However, the Fa mark was inherently distinctive for the goods in question.
*The Football Association could not benefit from its reputation in relation to football for the goods under attack in Classes 3, 5 and 21.
*Certain of the challenged goods were identical and some were merely similar. The hearing officer proceeded on the basis of an assessment of the likelihood of confusion in relation to the goods which were identical, on the basis that if there was no confusion in relation to the identical goods, there could be no confusion in relation to the similar goods.
*The average consumer would not dissect the Football Association’s mark into its verbal and figurative components. The word ‘The’ would be dismissed as non-distinctive, but the shield element would retain its distinctiveness, even when the entire mark was reduced in size. In fact, when the mark was reduced in size, it was the verbal element that became difficult for consumers to make out. Thus, the marks were visually or aurally quite different.
*Henkel’s mark had no conceptual meaning. On the other hand, the word element of the Football Association’s mark would be seen as referred to the first or original football association, and device mark would be seen as representing England.
*As a result, on a global appreciation, the marks were not similar enough to lead to confusion and the opposition failed.
The IPKat reckons that at first it sounds a bit odd to say that reputation in Europe doesn’t give enhanced protection since we are part of Europe, but on reflection, it’s the only answer than can be right if reputation in the UK hasn’t been made out.