Trade mark decision

BL Number: O/160/04
Decision date: 4 June 2004
Hearing Officer: Mr M Foley
Mark: NEW YORK COSMOS
Classes: 25
Applicant: North American Soccer League Merchandise Limited
Opponent: The Old Fashioned Shirt Co Limited
Opposition: Sections 3(1)(b) & (c) & Section 5(4)(a)

Result

Section 3(1)(b) & (c) - Opposition failed.

Section 5(4)(a) - Opposition failed.

Points Of Interest

None

Summary

The opponent company carried on the business of distribution, marketing and sale of replica historic playing jerseys and shirts of well known national and international football teams. None of the shirts are replicas of current playing kit.

The business was commenced as a partnership in 1995/6 and transferred to the current company in 1998. Sales of New York Cosmos kit commenced in 1996 and sales of £10,000 took place in 1996 and 1997 and £15,000 in later years. All sales were under the name The Old Fashioned Shirt Co Ltd (TOFFS) and the kit was marketed by way of brochures etc and via the internet. The applicant disputed that the opponent had any rights in the mark in suit as all sales were undertaken by TOFFS and any reputation would accrue to that Company.

Under Section 3(1)(b) & (c) the Hearing Officer accepted that the mark in suit does not consist exclusively of signs which have any reference to a characteristic of the goods for which registration is sought. The fact that it may be used in a non-trade mark way, such as to show an allegiance to a football team, did not render the mark in suit non-distinctive. The Hearing Officer went on to conclude that the mark applied for was not barred from registration by the provisions of Section 3(1)(b) & (c).

Under Section 5(4)(a) – Passing Off – the Hearing Officer considered the use claimed by the opponent in some detail. He concluded, however, that such use had been as an emblem on sports shirts etc and that the shirts had been sold under the name TOFFS. Thus the opponent had accrued no rights such as would enable it to press its case by way of a passing off action. Opposition thus failed on this ground.

Full decision O/160/04 90Kb