WEST HAM registration ends in a draw

In O'Connell v West Ham United Football Club plc, the UK Trademark Registry has allowed in part the opposition to the registration of a WEST HAM mark for football club merchandise on the basis that it is geographically descriptive under Section 3(1)(c) of the Trademarks Act 1994.

West Ham United Football Club applied to register WEST HAM and six other signs incorporating that name and variations of 'united' and/or 'football club' as trademarks in various classes. Patricia Hard O'Connell and Michael O'Connell opposed the application on several grounds, including the following:

• The marks would be used on goods that bear a badge of allegiance to West Ham Football Club and thus lacked distinctive character.
  
  
• The marks did not constitute a series and thus could not be registered in a single application.
  
  
• West Ham is geographically descriptive of an area of London and thus precluded from registration pursuant to Section 3(1)(c) of the Trademarks Act.

The hearing officer upheld the opposition in part. He confirmed the principle laid down in Arsenal ([2002] EWHC 2695) that a mark used as a badge of allegiance does not necessarily lack distinctive character, quoting the European Court of Justice (ECJ):

"The fact that the consumer might be motivated to buy the product and show support for his or her football team does not detract from the distinctive character..."

and Justice Laddie (in the English courts at first instance):

"I do not see any reason why use of the signs in a trademark sense should not be capable of being distinctive. When used, for example, on swing tickets and neck labels, they do what trademarks are supposed to do, namely act as an indication of trade origin and would be recognized as such..."

However, the hearing officer refused the registration of WEST HAM in relation to books, magazines, printed material and photographs. While West Ham is not currently known for its industries, the court confirmed that the future use of the name as an indication of the geographical origin of goods by other parties must be considered. However, referring to the ECJ's ruling in Windsurfing Chiemsee, he indicated that a mere possibility of producing or trading goods from a particular location was not a sufficient ground for objection - a reasonably foreseeable likelihood that such circumstances will arise is required. Quoting from that case, the hearing officer added that particular consideration should be given to the:

" ... degree of familiarity amongst the relevant ... persons with the geographical name in question, with the characteristics of the place designated by the name, and with the category of goods concerned."

He also quoted from Tottenham (BL 0/15/02), a case involving similar circumstances (and the same opponents):

" ... the evidence indicates that it is much more likely to be associated with the football club. The evidence suggests to me that the football game is likely to subsume any geographical association."

The hearing officer also referred to Koninklijke KPN Nederland NV v Benelux-Merken Bureau, in which the ECJ held that the average consumer is presumed to be intelligent, and reasonably well informed and attentive (see POSTKANTOOR pushes BABY-DRY test one step further). He concluded that 'West Ham' would be a "natural and apt" name to use for a newspaper serving that area of London. Accordingly, he refused registration in relation to magazines and other printed material (eg, books and photographs) for which the mark would be descriptive.

Considering the last ground of opposition, the hearing officer found that WEST HAM did not constitute a series with the other marks, which all made reference to the football club in one form or another. Accordingly, the hearing officer found that WEST HAM was not registrable pursuant to the Patent Office's Practice Amendment Notice 1/03 on series of trademarks.

Interestingly, the hearing officer stated that, as the application had been published, division of the application for the series was no longer possible, leaving deletion as the only option. A fresh application would of course result in loss of the priority date.

Mark A Lubbock, Ashurst, London