Bad faith has been a hot topic in UK and EU trade mark matters in recent years – not least in the sports world where recent prominent cases have concerned the football superstars, and one time teammates, Lionel Messi and Neymar. Whilst in those cases bad faith was found to be a valid ground for refusal of the trade marks in question, which the players did not consent to, a recent decision of the Appointed Person in the United Kingdom has provided an important clarification on how bad faith objections must be raised in the UK.
Global Trademark Services Ltd (“GTS”) filed applications for the below trade marks in relation to ‘clothing, footwear and headgear’ in class 25 in early 2021 (UK Trade Mark Applications 3587268 and 3595047 respectively):
The first mark clearly displays the name of famous Arsenal striker Thierry Henry and the second application includes the name of Brazilian forward Ronaldinho. Both marks also prominently feature club crests which are highly similar to those of the clubs each player is famous for playing for (Arsenal and Barcelona respectively), with minor deviations in terms of design. The UKIPO had initially refused both applications under section 3(6) of Trade Marks Act 1994. Interestingly the UKIPO had permitted previous registrations by GTS including for retired Celtic footballer Willie Wallace and outlined this was because he was not as famous Ronaldinho and Henry and there were other football players with the surname Wallace.
At an initial ex parte hearing before the UKIPO, the Hearing Officer upheld the decision in relation to the Henry and Ronaldinho applications and determined the relevant consumer would recognise the respective marks as referring to the famous footballers – Thierry Henry and Ronaldinho. In addition, in relation to the Ronaldinho mark the UKIPO Hearing Officer noted that the silhouette included in the mark incorporated Ronaldinho’s characteristic long flowing hair at the back. Without evidence of consent from the players the Hearing Officer found that GTS had acted in bad faith in making the application and had attempted to free ride on the fame of the retired players. In the decision, the Hearing Officer outlined that the UKIPO has a duty to raise and maintain bad faith filing objections to protect both the average consumer who would be misled and the “famous” person whose name is part of the mark.
GTS filed a further appeal to the Appointed Person, Mr Geoffrey Hobbs QC, seeking to challenge the finding of bad faith on the grounds the finding by the Hearing Officer was legally and procedurally flawed. Mr Hobbs found it was procedurally unacceptable for the UKIPO to raise grounds of bad faith of its own volition and consequently upheld GTS’ appeal. It was found that by raising bad faith itself, the UKIPO had effectively made a finding of conflict with unregistered rights which had not been asserted by any third party. Mr Hobbs identified some of the following reasons to support his finding:
• It is not for the Registrar (i.e. UKIPO) to make finding of bad faith itself but for the accuser to provide clear details as to how the conduct of the applicant amounts to bad faith.
• The requirement for consent to be obtained presumes the existence of a right to object, this approach is also contrary to the UKIPO’s policy practice of no longer requiring letters of consent.
• The UKIPO’s interpretation and in turn reliance on the NEYMAR case was incorrect, the EU General Court in that case did not base its decision on a presumption of bad faith but rather outlined that it is for the applicant of a declaration of invalidity to prove the circumstances that substantiate a finding of bad faith.
• The Hearing Officer’s decisions were not based on any evidence that proved the existence of earlier rights and therefore a conflict with earlier rights. Moreover, the conflict with other trade mark case law and the idea that only a celebrity or their successors may ever market their own character.
• Whilst the UKIPO can find a trade mark invalid on the grounds of bad faith it is not allowed to determine whether a bad faith objection they themselves have raised is well-founded.
Mr Hobbs’ decision confirms that it is not up to the UKIPO to raise an objection on the grounds of bad faith and to make this finding without any evidence. Instead, it is up to a third party who opposes the registration of the mark to raise the objection. The findings in the MESSI and NEYMAR trade mark cases therefore remain valid and a finding of bad faith remains a useful objection for rights holders however it is clear it is up to the rights holders themselves to raise the opposition on these grounds rather than the trade mark examiner.
Accordingly, this decision serves as a timely reminder that rights holders should have monitoring services in place so that potentially problematic trade mark applications which are published for opposition are identified to ensure that opportunities to oppose are not missed.
The applications for the Ronaldinho and Henry marks have now been referred back to the UKIPO and should shortly be published for opposition, assuming no further objections are raised by the UKIPO. It is currently not clear if the football clubs or the retired football players themselves will oppose the applications on the grounds of prior rights and/or bad faith. However, it will be interesting to watch the applications as they proceed.