Mann in the Middle rules CBD trade mark offside

Mr Justice Mann was in action last Friday, giving judgment in Score Draw Ltd v Finch [2007] EWHC 462 (Ch), an appeal to the Chancery Division (England and Wales) from a decision of the UK Trade Mark Registry.

Score Draw made and sold replica nostalgic football shirts. Finch owned a UK registered trade mark consisting of the CBD badge, CBD being the former governing body for sport in Brazil. The badge was iconic in football circles, since it appeared on the Brazilian national football team's shirts between 1914 and 1971 and was worn by such legendary figures as Pele and Jairzinho.

Finch informally licensed the use of the mark to Score Draw's competitor TOFFS ("The Old Fashioned Football Shirt Company"), following which Score Draw sought a declaration that the mark was invalid on various grounds including lack of distinctive character. In a hearing before the Registry, Score Draw adduced unchallenged evidence that it had been using the badge in question on its retro Brazilian football shirts from the mid-1990s, if not earlier. The hearing officer however concluded that the mark was capable of being indicative of trade origin.

Score Draw appealed. The company conceded that the mark was originally capable of denoting trade origin but maintained that, once the Brazilian football team stopped using it, its significance was that it denoted the former Brazilian football team and could no longer be said to denote the trade origin of anyone, let alone Finch who, in common with other traders, sought to use the badge on replica football kits.

Left: Brazilian shirt from 1970, as depicted on the TOFFS website. The legend accompanying the photo reads "THE BADGE ON THIS SHIRT IS A REGISTERED TRADEMARK ® of TOFFS"

Mann J allowed the appeal. He agreed that a mark that might once have been capable of denoting a trade origin could lose its capacity to do so in consequence of use by third parties. Here evidence demonstrated that the badge was used to indicate team loyalty or affiliation and that, since the mid-1990s if not earlier, it had plainly been used to denote historical football teams. He added that TOFFS' own advertising showed that the use of the badge was designed to show the authenticity of its football shirts. The fact that a badge had not previously been used as a trade mark didn't stop it acquiring distinctiveness through trade mark use in the future, but its use as an historical icon had robbed the badge of its power to be distinctive of trade origin. The registration was therefore invalid.

The IPKat agrees. This seems to be a case that turns on its evidence and it's certainly not an Arsenal v Reed situation: if the CBD badge was never used as a trade mark and has been regularly copied by shirt replica sellers, it is difficult to see how the trade mark's validity could be upheld.

Right: Wayne the shirtless football cat, available from Lorna Bailey

Merpel adds, if the trade mark had been valid, it would have been fun to contrast this case (replica shirts, which are full-sized and can be worn as shirts) with the ECJ's recent ruling in Adam Opel v Autec (replica cars, which are scaled down and you can't drive around in them).