1. Premier SPG opposed the registration of PREMIER LEAGUE in Class 25 based on its PREMIER marks and PREMIER-formative marks in the same class
2. The court found that there was no deceptive similarity between the marks and that the only common element was theword ‘Premier’
3. Premier SPG clearly could not have a monopoly over the word ‘Premier’, as it is a word of general use

In Premier SPG and WVG Mills Pvt Ltd v Football Association Premier League Ltd, the Delhi High Court has considered anappeal filed by Premier SPG and WVG Mills Pvt Ltd (‘the appellant’) against the rejection of its opposition to the registration ofthe mark PREMIER LEAGUE (depicted below) in Class 25, filed by Football Association of Premier League Ltd (‘therespondent’):

Background

In the opposition proceedings, the appellant mainly relied on its prior statutory and common law rights in PREMIER marks andPREMIER-formative marks in Class 25. The respondent, which is headquartered in London and is the organising body of the‘Barclays Premier League’ (the highest level of the English football league system), contested the opposition, and both sidesfiled evidence to substantiate their contentions.

Pursuant to the hearing, the registrar dismissed the opposition, holding that there was no similarity between the rival marksfrom a phonetic, visual or structural point of view. ‘Premier’ was the only common element in the marks and, it being a genericword, no one could claim any exclusivity over it.

Aggrieved by the registrar’s order, the appellant filed an appeal before the Delhi High Court on the following grounds:

1. The appellant had used its marks since 1980 and owned over 30 registrations for PREMIER-formative marks in Class 25. On the other hand, the respondent’s application dated from 2006.
2. The respondent had applied for registration in Class 25 in respect of clothing, footwear and headgear, which related to the appellant’s business.
3. The registrar ought to have considered that the dominant feature of the appellant’s mark was ‘Premier’ and that it was the proprietor of several PREMIER-formative marks, including:  
4. The registrar had failed to consider the ‘anti-dissection’ rule and the ‘dominant or essential feature’ relied on by the appellant.
5. The respondent’s reliance on the registration for the mark BARCLAYS PREMIER LEAGUE had no relevance, as it had lapsed in 2017.

The respondent countered these contentions as follows:

1. ‘Premier’ is a generic word and no one can claim any exclusivity over it.
2. The register is crowded with marks containing the term ‘Premier’.
3. The registrar had rightly compared the marks as a whole and held that they were visually, structurally and phonetically different.
4. The adoption of the subject mark was in good faith, considering that the respondent’s registration for the mark depicted below was not opposed by the appellant:
5. The appellant did not own a registration for the mark PREMIER per se in Class 25.

Decision

The court, after considering the parties’ pleadings and arguments, as well as the case law on the dominant element of marks,held as follows.

The court first held that a perusal of the rival marks showed that there was no deceptive similarity, and that the only common element was the word ‘Premier’. Further, in the respondent’s mark, ‘Premier’ was followed by the word ‘League’ with the device of a lion wearing a crown standing on a football. This indicated the services provided by the respondent in relation to football.The appellant’s mark was a composite mark and the appellant did not own a registration for the word ‘Premier’.

The court considered the principle of ‘anti-dissection’ and the identification of the ‘dominant element’ for the purpose of comparing the composite marks. On reviewing and analysing the decisions relied on by the parties, it was clear that the anti-dissection rule would apply to the two composite marks at issue. In this regard, the device mark of the respondent could not be dissected and compared with the appellant’s registered mark, which was also a device mark.

The court further held as follows:

There was merit in the respondent’s contention that the word ‘Premier’ is common to the trade in Class 25, which was supported by documentary evidence. Therefore, the appellant had failed to substantiate that the word ‘Premier’ was exclusively associated with its business.

In addition, it was relevant to note that an application in Class 25 is clearly for the purposes of selling merchandise, which is a practice for premium sports brands. In the instant case, the failure to oppose the respondent’s earlier registration for the BARCLAYS PREMIER LEAGUE mark, which contained the word ‘Premier’, did not support the appellant’s case. The respondent’s registration for that mark remained on the register for a period of 10 years and the appellant did not initiate any action in this regard.

In light of the above, the court held there were no merits in the appeal and dismissed the same.

Comment

The case highlights the risk of adopting a commonly used term as a brand, and the challenges of protecting such mark.

This article first appeared in WTR Daily.