Thursday, September 06, 2007

Sporting trade marks

By Dr Wim Alberts

In the world of trade mark law, some of the most interesting and at the same time significant developments have been due to cases featuring trade marks being used in some sport or the other. Some years ago, in a matter involving the England Rugby Union v. Cotton Traders (a company run by the ex-British Lions prop Fran Cotton), the issue was the right to the traditional red rose, first worn in 1871. A particular format was worn from 1920 to 1998 (this format was changed in 1998 to its current version). The Rugby Union obtained a registration for the device of a rose. The court held that the rose was primarily taken by members of the public as denoting either England as a country or, more specifically, the England rugby team. Its association with the Rugby Union is much less widespread, and where it does exist, of secondary significance. It was also decided that the registered rose would not be seen by a significant proportion of the public as denoting the trade origin of the goods to which it is applied. In the court’s view, the mark would undoubtedly be seen, at least partly, as a national emblem or symbol. Interestingly, reference was made to the use of a mark by a club, and it was said that in the case where the national team represents a country, an association with the entity which manages the team is secondary, if present at all. This was seen to be in contrast with a club team, where there is such a link. The outlook for the protection of trade marks in sport was bleak.

The rest of the development of English law relating to a trade mark as indicating the source of goods revolves around the various decisions relating to the soccer club Arsenal. The genesis of the various disputes is the sale by a party not authorised by Arsenal Football Club who sold memorabilia outside the stadium. In trade mark infringement proceedings based on the fact that he was using the identical goods in relation to an identical mark, he alleged that he was not using the Arsenal trade mark as a badge of origin but in fact a badge of allegiance. For this reason, he alleged that he was not in fact infringing the Arsenal trade mark. In the authoritative decision of the European Court of Justice, it was held that it could in fact be infringement of a trade mark even though it was not seen as a badge of origin.

The guiding principle was that it is the function of trade mark legislation to protect the ability of a trade mark to indicate origin. If this ability of a trade mark is affected it does not matter whether or not the use was perceived as indicating the origin of goods. Reference can also be made to the Nottinghamshire case. In this decision, infringement proceedings were brought against Woolworths due to alleged infringement of a registered trade mark for the FA Crest, used in relation to clothing. In this matter it was held that there was no direct evidence of an expectation of a link between the clothing and the FA.

In South Africa, consideration can be given to the decision in which the South African Football Association adopted the name Bafana Bafana and attempted to obtain sole rights in relation thereto. Another party had a registration for this mark in relation to clothing. The court held, amongst others, that the mere fact that the use of the name Bafana Bafana on clothing would call to mind the national team and encourage the sentimental soccer fan to purchase it, does not mean that there is a misrepresentation in a passing off sense.

Much would depend on the evidence available. For instance, the Springbok trade mark has been used by the South African rugby team for more than a century. Previously, in amateur days, the name Springbok was used in relation to various products. Nowadays, however, the use of the Springbok trade mark, in particular the logo, is being controlled very strictly. In this manner, the integrity of the mark is protected, and it is ensured that an attack on the mark as being merely a symbol of the team, and not also indicating (commercial) origin, can be prevented.