THE RETURN OF THE BADGE OF ALLEGIANCE ARGUMENT

The IPKat draws your attention to a recent decision of the UK Trade Mark Registry on the registrability of football club names for merchandising purposes. West Ham applied to register a series of seven trade marks including the element WEST HAM as trade marks for a wide number of goods. The O’Conells opposed the application, arguing that the marks were geographically descriptive under s.3(1)(c) of the Trade Marks Act 1994, they were devoid of distinctive character under s.3(1)(b) because they acted as badges of allegiance and because West Ham had no intention to use those marks as trade marks. The O’Connells claimed that the seven marks also could not be registered as a series under s.41(2).

The hearing officer allowed the opposition in part:
 The geographical origin objection applied only to the WEST HAM mark in solus because s.3(1)(c) only covers marks which consist exclusively of signs or indications that may serve to designate geographical origin. This was not true of the other marks in the series.
 WEST HAM was not geographically descriptive under s.3(1)(c) for most of the goods and services applied for. In its Windsurfing Chiemsee test, the ECJ had not intended to suggest that the fact that it was possible to produce or trade in goods from a particular location should be sufficient reason for a mark to be barred from registration as geographically descriptive. Instead, there must be a reasonably foreseeable likelihood that such circumstances will arise. Here the list of goods was extensive and there was no basis for the objection in relation to the vast majority of items. The only exception was that WEST HAM was a natural and apt term to use in relation to local newspapers and therefore the objection was valid in so far as it applied to the application for “newspapers” and “printed matter”. WEST HAM was also descriptive of “books”, “photographs”, “prints” and “pictures”, which could be about or of the area concerned.
 Contrary to the O’Connells’ argument, there was no separate ground of objection available under s.3(1)(b) based on the mark’s significance as a geographical location.
 The fact that the mark could serve as a badge of allegiance did not in and of itself mean that it was lacking in distinctive character. However, the badge of allegiance argument did mean that the marks were not distinctive in respect of the signs that referred to the football club rather than the area when they were used on items about or relating to the club itself e.g. calendars, magazines and stickers. Where the marks were used on such items they would do no more than describe the content or subject matter of those goods.
 The O’Connells’ argument under s.3(6) that West Ham was applying for the marks in bad faith was rejected. There was no evidence that West Ham did not intend to use the marks for the whole range of goods for which it applied. Football clubs do produce a wide range of merchandise and West Ham had made the relevant application in its application that it had a bona fide intention to use the mark. The argument that West Ham only intended to use the marks with other distinctive elements, and therefore had no intention to make trade mark use of the marks applied for was an attempt to re-run the badge of allegiance claim that could not be accepted. In any event, there was no evidence that WEST HAM would not use the mark on its own.
 The O’Connells were partially correct that the set of marks were not a series under s.41(2). WEST HAM was not would be perceived as a geographical area, whereas the other marks would be perceived as the name of a football club. Therefore the identity of the trade mark had been affected. However, all of the other six marks could constitute a series since all would be understood and denoting the football club, even those which did not include the element “FC” of “football club”.

The IPKat is surprised to see the “badge of allegiance” approach popping up in the new area of absolute grounds for the refusal of registration. He thought that the concept had died a death after Laddie J’s unsuccessful use of the term in his reference to the ECJ in Arsenal v Reed.

West Ham here, here and here
Hammers here and here