Second skirmish for football clubs
Adrian Dykes considers a trade mark rematch
O/528/21, Leeds City Football Club Ltd – LCFC (Opposition), UK IPO, 12th July 2021
This opposition case was brought by Leicester City Football Club (Leicester) against Leeds City Football Club Ltd’s (Leeds) application to register a mark in classes 16, 25, 26 and 41.
Leicester’s opposition relied on its 2018 registration for LCFC, registered in identical classes. The application itself was for a series mark covering colour and black-and-white versions, but nothing turns on that point.
For the uninitiated, Leicester plays in the Premier League. It famously won that League in the 2015/16 season, despite the bookies having written the club off with 5,000:1 odds on winning and considering it a prime candidate for relegation.
Leeds does not play in the Premier League, and indeed should not be confused with Leeds United Football Club (which does) or The Leeds City Football Club, which plays in the Yorkshire Amateur League and uses a different crest (notably without the abbreviation LCFC).
Leeds was shown the red card in the earlier opposition decision O/755/181, when a very similar series mark was refused in the same classes under s5(2)(b) of the Trade Marks Act 1994 on the basis of Leicester’s LCFC registration.
The Hearing Officer (HO) held that LCFC retained its independent distinctive character, which was dominant in the crest.
Therefore, the marks were held to be visually similar to a medium degree, aurally identical (or similar to medium to high degree, depending on which elements are pronounced in Leeds’ mark), and conceptually similar to a medium to high degree.
Given the identity/similarity of the goods, there was a likelihood of confusion, particularly bearing in mind the principle of “wrong way round” confusion.
In this case, confusion was held to be inevitable if consumers were to encounter Leicester’s LCFC mark after seeing the Leeds mark on identical/similar goods.
Second attempt
Leeds filed again, tweaking the mark slightly and narrowing the specification. After filing the counterstatement – and not being put off by the earlier decision – Leeds, which was unrepresented, then left the goal wide open, taking the unusual step of filing no evidence and no submissions – preferring, it seemed, to watch from the sidelines.
Predictably, Leicester sought to rely on the earlier decision.
However, the HO made new findings on the similarity of the marks, cutting back on the earlier decision by holding the marks to be visually similar “to a fairly low degree”, aurally identical, dissimilar, or similar to a fairly low degree (again, depending on what is pronounced), and conceptually similar to a medium degree.
This could have enabled Leeds to rely on the interdependence principle (as the first HO had), including the finding that the marks were in no aspect less than similar to a medium degree.
Leicester had argued that LCFC enjoyed an enhanced level of distinctiveness, particularly off the back of its 2015/2016 Premier League win. However, the evidence did not support such a finding in relation to LCFC, but only in relation to the signs LEICESTER CITY and LEICESTER.
Therefore, with the goalposts moved in relation to the similarity of marks but all other factors being equal, the HO went on to apply the global appreciation test, which is better understood than the offside rule.
The HO did not consider the issue of “wrong way round” confusion.
However, she dismissed any likelihood of direct confusion (mistaking the marks for each other), holding there to be “significant visual differences” between the marks, having regard to the principle in Medion and the identity and high degree of similarity between the goods/services.
The HO then went on to consider indirect confusion (ie, the possibility of recognising that the marks are different, despite including a common element, and believing that the later mark is another brand related to the earlier mark).
Despite the lower degree of similarity between the marks, the identical shared element was held to be enough to support a finding of indirect confusion, even if applying a high degree of attention.
The coincidence of the letters LCFC was sufficient to lead consumers to believe that the marks are used by the same or economically linked undertakings, and the additional words in Leeds’ mark were not sufficient to obviate this.
Leeds’ mark is particularly complex, and the HO recognised that it would obviously be recognised as a football crest.
This decision seems to be pushing the boundaries of Medion, affording a broad scope of protection to a simple four-letter acronym.
The HO even acknowledged that consumers would clearly understand that the mark relates to a football club, or even a city’s football club, which should have triggered the global appreciation test.
The conclusion appears to stray towards finding confusion based solely on a common element; that is, a calling to mind rather than indirect confusion. Football clubs in Loughborough, London, Lincoln, Luton and Londonderry should take note.
Once again, this decision highlights the importance of professional representation in opposition proceedings. One wonders whether Leicester can expect a third application to oppose in the future and look forward to scoring a hat-trick of victories.
Key points
- This decision appears to push the boundaries of Medion. It affords a broad scope of protection to a simple four-letter acronym
- The conclusion seems to stray towards finding confusion solely based on a common element – that is, calling to mind rather than indirect confusion
- This decision highlights the importance of professional representation in opposition proceedings
