The Supply Of The Badge Of Allegiance Argument

draws your attending to a recent decision of the United Kingdom of Great Britain together with Northern Ireland of Britain together with Northern Republic of Ireland Trade Mark Registry on the registrability of football game social club names for merchandising purposes. West Ham applied to register a serial of 7 merchandise marks including the chemical ingredient WEST HAM every bit merchandise marks for a broad break of goods. The O’Conells opposed the application, arguing that the marks were geographically descriptive nether s.3(1)(c) of the Trade Marks Act 1994, they were devoid of distinctive grapheme nether s.3(1)(b) because they acted every bit badges of allegiance together with because West Ham had no intention to occupation those marks every bit merchandise marks. The O’Connells claimed that the 7 marks also could non move registered every bit a serial nether s.41(2).

The hearing officeholder allowed the opposition inward part:
The geographical beginning objection applied simply to the WEST HAM rank inward solus because s.3(1)(c) simply covers marks which consist solely of signs or indications that may serve to designate geographical origin. This was non truthful of the other marks inward the series.
WEST HAM was non geographically descriptive nether s.3(1)(c) for most of the goods together with services applied for. In its Windsurfing Chiemsee test, the ECJ had non intended to advise that the fact that it was possible to make or merchandise inward goods from a detail place should move sufficient argue for a rank to move barred from registration every bit geographically descriptive. Instead, in that place must move a reasonably foreseeable likelihood that such circumstances volition arise. Here the listing of goods was extensive together with in that place was no ground for the objection inward relation to the vast bulk of items. The simply exception was that WEST HAM was a natural together with apt term to occupation inward relation to local newspapers together with hence the objection was valid inward then far every bit it applied to the application for “newspapers” together with “printed matter”. WEST HAM was also descriptive of “books”, “photographs”, “prints” together with “pictures”, which could move almost or of the surface area concerned.
Contrary to the O’Connells’ argument, in that place was no assort Earth of objection available nether s.3(1)(b) based on the mark’s significance every bit a geographical location.
The fact that the rank could serve every bit a badge of allegiance did non inward together with of itself hateful that it was lacking inward distinctive character. However, the badge of allegiance declaration did hateful that the marks were non distinctive inward honor of the signs that referred to the football game social club rather than the surface area when they were used on items almost or relating to the social club itself e.g. calendars, magazines together with stickers. Where the marks were used on such items they would make no to a greater extent than than depict the content or dependent area thing of those goods.
The O’Connells’ declaration nether s.3(6) that West Ham was applying for the marks inward bad organized faith was rejected. There was no testify that West Ham did non intend to occupation the marks for the whole gain of goods for which it applied. Football clubs make make a broad gain of merchandise together with West Ham had made the relevant application inward its application that it had a bona fide intention to occupation the mark. The declaration that West Ham simply intended to occupation the marks amongst other distinctive elements, together with hence had no intention to brand merchandise rank occupation of the marks applied for was an endeavour to re-run the badge of allegiance claim that could non move accepted. In whatsoever event, in that place was no testify that WEST HAM would non occupation the rank on its own.
The O’Connells were partially right that the fix of marks were non a serial nether s.41(2). WEST HAM was non would move perceived every bit a geographical area, whereas the other marks would move perceived every bit the mention of a football game club. Therefore the identity of the merchandise rank had been affected. However, all of the other vi marks could institute a serial since all would move understood together with denoting the football game club, fifty-fifty those which did non include the chemical ingredient “FC” of “football club”.

is surprised to run into the “badge of allegiance” approach popping upwardly inward the novel surface area of absolute grounds for the refusal of registration. He idea that the concept had died a decease subsequently Laddie J’s unsuccessful occupation of the term inward his reference to the ECJ inward Arsenal v Reed.

West Ham here, here and here
Hammers here and here