Author: Aaron Wood

The challenges when dealing with a bad faith trade mark claim.

Author: Aaron Wood

If the UKIPO knows that an application attempts to take advantage of a famous person’s repute, can the UKIPO raise objections themselves? 

This was the question posed by the Ronaldinho case, in which the simple answer on appeal was no. In overturning the initial decision, the Appointed Person Geoffrey Hobbs KC gave the UKIPO the red card.

Background

In 2021, Global Trademark Services Limited (GTS) submitted applications to register badges that consisted of football player images and names.

Amongst them was one for ex-Barcelona footballer Ronaldinho, and one for Henry, a reference to the former Arsenal football player Theirry Henry. The UKIPO objected to these applications itself, asserting that they conflicted on bad faith on the basis that:

- “UK consumers recognise their names and identify them as famous ex-footballers, despite Ronaldinho and Thierry Henry already being retired when the applications were filed.
- UK consumers would also expect these ex-footballers to have partnered or endorsed the goods offered by GTS. However, there was no correlation between the parties, thus GTS was ‘free riding’ on Ronaldinho’s and Henry’s reputations. As a result, there was a rebuttable presumption of bad faith, which GTS had failed to dispel.”

Furthermore, they would take advantage of the repute in those player names, relying upon a published policy that the UKIPO may object to applications consisting of the names of dead celebrities. Whilst GTS challenged the objections, the Hearing Officer upheld the refusal of the applications for the Ronaldinho and Henry device marks. As a result, they were deemed commercially unacceptable.

Allowing the appeal, the Appointed Person concluded that this policy, as well as the decision to refuse the application, was incorrect and could not be reconciled with the broader law. Of course, it was open to Thierry Henry or Ronaldinho (or any other parties claiming ownership of the unregistered rights) to bring an opposition or file invalidation action based on those earlier unregistered rights. Equally, it was also open to any third party to do the same on the basis of bad faith, irrespective of whether they owned the earlier unregistered trade mark rights.

However, it was not acceptable for the UKIPO to conduct its own investigations into the existence (or otherwise) of prior unregistered trade mark rights, and later refuse a trade mark themselves. The UKIPO’s role as an arbiter of disputes over intellectual property rights mean that they should not object to the registration of names on the grounds of bad faith, based upon their own investigations.

Comment

The practical result of this is to highlight that all celebrities and sports professionals need to monitor any third-party applications that attempt to register their names. Global watching programmes may be set up to monitor for applications to register their names (or nicknames) and we strongly recommend that these are utilised.