Marks For Famous Footballers' Names Dribble Bad Faith Refusal

• Published date: 14 October 2022
• Subject Matter: Intellectual Property, Media, Telecoms, IT, Entertainment, Trademark, Sport
• Law Firm: Marks & Clerk
• Author: Ms Marcela Carvalho

In 2021, Global Trademark Services Limited ("GTS"), applied to register the following marks:

in relation to "clothing, footwear, headgear" in class 25. The Trade Marks Registry raised objections against each application on the basis that GTS had filed the applications in bad faith. GTS challenged the objections at a hearing, but the Hearing Officer maintained the refusal of the applications for the RONALDINHO and HENRY device marks.

In brief, the Hearing Officer referred to the NEYMAR decision (Case T-795/17 Moreira v EUIPO (NEYMAR) and the TRUMP decision (Trump International Ltd v DTTM Operations LLC [2019] EWHC 769 (Ch)) and found that:

• Although Ronaldinho and Thierry Henry were already retired when the applications at issue were filed, UK consumers still recognise their names and recognise them as famous ex-footballers.

• UK consumers would expect these ex-football players to have endorsed or have some control over the goods offered by GTS but there was no connection between the parties and so GTS was 'free riding' on Ronaldinho's and Henry's names, which amounts to bad faith. For this reason, there was a rebuttable presumption of bad faith, which GTS had failed to dispel.

• The Registrar has the right to intervene and raise bad faith objections in ex-parte examination to protect consumers, the famous person whose name is being applied for as a mark by a third party to whom they are not connected, and the trade mark registration system.

• GTS' applications would also prevent Ronaldinho and Thierry Henry from making legitimate use of their own names in the course of trade.

GTS filed a further appeal to the Appointed Person, Geoffrey Hobbs QC, on the basis that the Hearing Officer's decision was legally and procedurally flawed.

The Decision

Geoffrey Hobbs QC referred to the established case law on bad faith, which provides that the good faith of the Applicant must be presumed until proved otherwise; thus, it is for the accuser to overcome the "rebuttable presumption of good faith". He added that while Applicants may be best placed to provide information regarding their motive for applying for a mark, the accuser still needs to 1) set out the reasoning for the bad faith filing claim and the factual basis on which this accusation is made, and 2) proceed on the basis of presumed innocence rather than on a rebuttable presumption of bad faith.

Mr Hobbs also took the view that the bad faith filing objections by the Registrar were supported by a 'right to a...