The Delhi High Court recently upheld the registration of the Premier League trademark in favour of The Football Association Premier League Limited, the corporation running the football competition [Premier SPG And WVG Mills Pvt Ltd v. The Football Association Premier League Ltd & Anr].Justice Anish Dayal rejected an appeal filed by Indian textile company Premier Mills, saying,"The appellant clearly cannot have a monopoly over the word ‘PREMIER’ considering it is a word of general use, as is rightly noted by the Registrar. It would be difficult to accept the appellant’s contention that ‘PREMIER’ was the dominant mark of the respondent’s mark and thus in conflict with the appellant’s mark. In the opinion of this Court ‘PREMIER’ in respondent’s mark cannot be severed, excised from its associated word ‘LEAGUE’ since it derives its context from it. ‘PREMIER’ refers to the category of a League, a special kind of League which in context of football has acquired and amassed worldwide recognition, goodwill and immediate re-call."The company had challenged the order passed by the Registrar of Trademarks, Delhi rejecting its opposition against the registration of the trademark in favour The Football Association Premier League Limited in Class 25 in the ‘clothing, footwear, headgear’ category.It was the appellant's case that it was part of the Premier Group, which has an international reputation for quality goods in the clothing industry built over the last 70 years. The 'Premier League' mark is similar to its own, the company claimed.It was argued that the two brands will now be competing in the similar category of products: clothing, footwear, and headgear.After considering the case, Justice Dayal ruled that an application in class 25 is clearly for the purposes of selling merchandise, which is a standard industry practice for premium sports brands, and it is normal for them to protect the same.“Selling of sports merchandise has become concomitant to the business and revenues of sporting organizations and the greater reputation and goodwill that the sporting event has, the greater is the fan craving for the merchandise. It is nobody's case that the respondent is planning to get into wholesome manufacture, distribution, export of general clothing goods and their use is clearly relatable to the sporting merchandise, considering that the mark is distinctive and relates to the Football League,” the judgment said.The Court noted the lack of opposition by the appellant company to Premier League’s earlier mark of ‘Barclays Premier League’ which subsisted on the trademark register for nearly 10 years.
“If at all ‘PREMIER’ was also contained in the earlier mark of ‘BARCLAYS PREMIER LEAGUE’, and if at all distinctiveness is sought on the basis of the word ‘PREMIER’, an opposition ought to have been filed at that stage itself. 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.”The Bench also said that the 'Premier League' mark is registered in favour of The Football Association in various countries across continents, which reinforces its right over this mark.“Accordingly, the appeal is dismissed. Pending applications, if any, are rendered infructuous,” the Court finally ordered.Advocate N Mahabir appeared for Premier SPG And WVG Mills.
The Football Association Premier League Limited was represented through Advocates Peeyoosh Kalra, CA Brijesh, Krisna Gambhir and Simranjot Kaur.
TAGS: Delhi High Court Trademark Premier League Clothing Footwear Headgear Registrar of Trademarks
