India: Delhi HC Dismisses Appeal Against Registration Of 'Premier League' Mark; Rules In Favour Of Football Association

The Delhi High Court late last month upheld the registration of trademark Premier League in favour of respondents Football Association Premier League and dismissed an appeal filed by Premier SPG and WVG Mills Pvt. Ltd.

Justice Anish Dayal concluded that the said mark of 'BARCLAYS PREMIER LEAGUE' subsisted on the trademarks register for at least a period of 10 years, and the appellant has not presented any step which was taken by them for opposition/rectification. Court also noted the extensive worldwide registrations of the respondent's trademark in various countries across continents thereby reinforcing their right over the said mark.

Case Background

This appeal was filed under Section 91 of the Trade Marks Act, 1999 read with Rule 156 of the Trade Mark Rules, 2017 assailing order dated February 2, 2023 passed by the Registrar of Trademarks, Delhi, rejecting the opposition of appellant to registration of the respondent's mark in class 25 (clothing; footwear; headgear).

Respondents had filed an application for registration of the said mark claiming "proposed to be used". The said mark was advertised for acceptance in the trademark journal on May 18, 2015. The application was opposed by the appellant on the ground that the mark was phonetically, visually, structurally and deceptively similar to the appellant's mark 'PREMIER' which was conceived, coined and adopted in 1949, and registered in various classes from 1980 onwards.

In India, the respondent is the registered proprietor of the 'BARCLAYS PREMIER LEAGUE' mark. Pursuant to an arrangement with Barclays Bank, the earlier sponsor of the league, the respondents continued to use their device mark 'PREMIER LEAGUE' without the word 'BARCLAYS' which continues to be distinctive, different, and highly stylized.

Submissions By Respondent

Counsel for respondent refuted the contentions of counsel for the appellant submitting the following;

1. 'PREMIER' is a generic word and cannot become a subject matter of exclusive right of any single person;

2. The Registrar had correctly applied the concept of "crowded field" highlighting the presence of other trademarks containing 'PREMIER' on the Register of Trademarks and no exclusivity could be claimed by the appellant;

3. The Registrar had correctly viewed the rival marks as a whole and refrained from dissecting them into different components, noting that the appellant does not have any rights over the 'PREMIER' word per se;

4. The respondent's mark could not be dissected into 'PREMIER' and 'LEAGUE', moreover the device of the lion wearing a crown along with a football was distinct;

5. Registrar had noted that there was a previously registered mark of the respondent 'BARCLAYS PREMIER LEAGUE' in class 25 and the respondent's adoption of the impugned mark cannot be said to be dishonest, or riding upon the goodwill of the appellant;

6. There was no opposition by the appellant to the earlier registration of the mark 'BARCLAYS PREMIER LEAGUE';

7. There existed overall visual, phonetic, and structural dissimilarities between the marks, when viewed in detail and compared as a whole, and the Registrar clearly highlighted that while the appellant's mark contained a flower in the device mark above the letter 'I' in 'PREMIER', the same is not present and is starkly distinguishable on the respondent's mark;

8. The appellant does not have a separate registration for the word 'PREMIER' in class 25 and the only registration is for the device mark which contains the word 'PREMIER' with a flower device and the appellant had not submitted any evidence to demonstrate how the word 'PREMIER' in their trademarks acts as a source identifier of its products;

9. Reliance was placed on Vasundhara Jewellers Pvt. Ltd. vs. Kirat Vinodbhai Jadvani and Ors., a decision by a Division Bench of the Delhi High Court, where it was held that it was not permissible to hold that two competing marks are deceptively similar by examining a portion of one mark and comparing it with the portion of another mark, if the composite marks viewed as a whole are dissimilar.

Judgment

Upon examining the submissions advanced on behalf of both the respondent and the appellant, the Court noted-

"A bare perusal of these marks would prima facie indicate that there is no deceptive similarity between the two marks and the only commonality between the same is the use of the word 'PREMIER'. Moreover, the word 'PREMIER' is suffixed by the word 'LEAGUE' in the respondent's mark and has a device of a lion wearing a crown and standing over a football, which is indicative of the nature of the services being provided by the respondent in the industry of football.

On the other hand, 'PREMIER' as used in the appellant's mark is of a completely different font and style and has a small flower device on top of the word. Applying the fundamental test as to whether there is a deceptive similarity, in the opinion of this Court, there is none on a bare perusal of the marks. Notwithstanding the prima facie assessment, the appellant's mark is a device mark, and they have no registration in the word 'PREMIER'."

Commenting on the High Court's decision in Vasundhara, Justice Dayal observed-

"What was therefore stressed, reiterated, and underscored by the Division Bench of this Court in Vasundhara (supra), is that examining the dominant part of a trademark for the sake of comparison of the conflicting marks is solely for the purpose of determining whether the marks were deceptively similar, when viewed as a whole.

The Court held that device/composite mark containing a word 'VASUNDHRA', could not give an exclusive right to use the word 'VASUNDHRA' and assail another device mark which was using the said mark. The Court noticed that a proprietor of a trademark cannot expand the area of protection granted to the mark in these circumstances and that the appellant in that case did not enjoy the monopoly for the use of the word 'VASUNDHRA'."

Moreover, the Single bench noted-

"The appellant's contention that no evidence was led by the respondent to establish that there was wide and extensive use of the word 'PREMIER', in the opinion of this Court is unmerited. This is for the reason that the Registrar was empowered to look at the Trademark Register to make an assessment from the other marks which would contain 'PREMIER'."

Further, the Court referred to the impugned order relying upon the respondent's search report of the word 'PREMIER' to show that the word was common to trade and is generic.

"A perusal of the said Ex. A, would show that the word mark 'PREMIER' in class 25 returned numerous registrations including the device which had been registered as 'BARCLAYS PREMIER LEAGUE', as well that of 'INDIAN PREMIER LEAGUE' [by the Board of Control for Cricket] and 'SRI LANKA PREMIER LEAGUE', 'PREMIER GOLF LEAGUE' etc. This would clearly bear out that the word "Premier" is a commonly used generic word particularly in conjunction with sporting leagues around the world and therefore has acquired extensive use."

Finally, the Court opined-

"Therefore, as held in Vasundhara (supra), this Court is of the opinion that the word 'PREMIER' is an intrinsically weak trademark since on account of extensive use, the said common word cannot be exclusively connected and relatable with the business of the appellant. It was for the appellant to prove that the word 'PREMIER' which formed part of the device mark would be identified exclusively with the business of the proprietor and no other. Clearly this threshold had not been met and no other evidence had been presented by the appellant in order to achieve the same."

The appeal was dismissed.

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