Trade mark decision

BL Number
Decision date
27 August 1999
Hearing Officer
Mr M Knight
09, 28
Konami Co Limited
Football Association Premier League Ltd.
Sections 5(2) and 5(4)(a) Section 3(6)


Section 5(2) - Opposition failed. Marks not confusingly similar.

Section 5(4)(a) - Opposition failed. Marks not confusingly similar.

Section 3(6) - No evidence filed in support of this ground.

Points Of Interest

  • 1. Under Section 5(4)(a) - Passing Off - it is necessary to consider how the respective marks are used and any comparison must take account of this fact.


Opponents opposition based on their ownership of the marks PREMIER LEAGUE and PREMIER LEAGUE and Lion device in Class 28. They also claimed that the marks had been licenced to authorised users in respect of goods falling within Classes 9, 14, 16, 18, 25, 26, 28, 29, 32 and services falling within Class 41. Under Section 5(2) the Hearing Officer concluded that the mark applied for was not, prima facie, confusingly similar to the marks owned by the opponents. He also decided that the opponents had not established that they had a reputation in their marks in relation to the goods at issue and therefore, in conclusion, he concluded that their opposition under Section 5(2) failed.

Under Section 5(4)(a) the Hearing Officer had to consider evidence which showed the applicants used their mark in the form PREMIER SOCCER and compare this mark with the opponents mark, as used, PREMIER LEAGUE and Lion device. While the Hearing Officer accepted that there was some similarity he concluded that the respective marks were not so similar that actual confusion or misrepresentation was likely.

Full decision O/354/99 PDF document52Kb