The Delhi High Court has rejected a petition challenging the registration of Premier League trademark to The Football Association Premier League Limited, the corporation running the football competition.
The order was recently passed by the single-judge Bench of Justice Anish Dayal on a petition filed by Indian textile company Premier Mills.
The textile 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.
The appellant contended 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.
It noted that the ‘Premier League’ mark was similar to its own, adding that the two brands will now be competing in the similar category of products: clothing, footwear, and headgear.
The High Court observed that the appellant clearly could not have a monopoly over the word premier, considering it was a word of general use, as 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, the word ‘Premier’ in the respondent’s mark could not be severed, excised from its associated word ‘League’ since it derived its context from it.
Premier referred 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 recall, noted Justice Dayal.
He said selling of sports merchandise had become concomitant to the business and revenues of sporting organizations. The greater reputation and goodwill that the sporting event had, the greater was the fan craving for the merchandise.
Considering that the trademark was distinctive and related to the Football League, the Bench observed that the respondent planning to get into wholesome manufacture, distribution, export of general clothing goods and their use was clearly relatable to the sporting merchandise.
Besides, the ‘Premier League’ mark was registered in favour of The Football Association in various countries across continents, which reinforced its right over this mark, noted the High Court and rejected the petition.
The single-judge Bench further took note of 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.
It noted that the word Premier was also contained in the earlier mark of ‘Barclays Premier League’, and if at all distinctiveness was sought on the basis of the word, 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, added the High Court.