The Delhi High Court maintains the registration of the mark “Premier League”

“‘PREMIER’ as it appears in the appellant’s mark includes a small floral design on top of the word and is written in a whole different typeface and style. 

Delhi High Court: Assailing an order dated 02-02-2023 issued by Respondent 2, the Registrar of Trade Marks, Delhi, which rejected the opposition of the appellant the premier SPG and WVG Mills Pvt. Ltd to register respondent’s mark in Class 25, this appeal was brought under Section 91 of the Trade Marks Act, 1999 examined with Rule 156 of the Trade Mark Rules, 2017. 

Anish Dayal, J.*, contended that as the appellant’s argument about the respondent’s mark challenge was not supported, there was no resistance by the complainant to the earlier registering of the respondent’s mark, “BARCLAYS PREMIER LEAGUE.” 

Opposition should have been submitted right away if “PREMIER” was included in the previous mark of “BARCLAYS PREMIER LEAGUE” and if “PREMIER” constituted the basis for any attempt at distinctiveness. 

For at least ten years, the above-mentioned “BARCLAYS PREMIER LEAGUE” mark was registered on the trademarks register, and the appellant could not provide any documentation of any action they had done to oppose or correct it. 

Background 

Respondent 1 submitted a request for registration of the previously mentioned mark, stating that it was “proposed to be used.” On September 7, 2015, the appellant opposed the application, arguing that the mark was confusingly similar to its mark “PREMIER,” which was conceptualized, coined, and adopted in 1949 and registered in several classes starting in 1980. Manufacturers, exporters, and marketers of yarn, apparel, and hosiery, including suits, shirts, ready-made clothes, dhotis, and textiles under various marks were the appellants.

Respondent 1 contended that they were the “Barclays Premier League’s” organizational body and that they held all of the League’s legal rights, including broadcast, commercial, and rule-making authority. Respondent held the registered ownership of the “BARCLAYS PREMIER LEAGUE” mark in India. 

The aforementioned mark was publicized in a Journal article dated September 13, 2010, and by a contract with Barclays Bank, the league’s previous sponsor, the respondent was permitted to keep using his device mark, Premier League, without the word “BARCLAYS,” which remained unique, unusual, and highly stylized. 

The Registrar of Trade Marks made a mistake, according to the appellant, when he concluded that “there was no analogy between both marks phonetic, visual, or structural.” The word “PREMIER” was the only element that the two marks had in common, and it was a general word that nobody could claim exclusive or control over.

The marks of Respondent 1 and the appellant were compared as:

Analysis, Law, and Decision

The Court stated that the word “PREMIER” was the only thing the two marks had in common and that there was no deceptive likeness between them at first glance. Also, Respondent 1’s mark featured a design with a lion holding a crown over a football and the word “PREMIER” suffixed with “LEAGUE,” indicating the type of services the respondent offered in the football business. 

However, the term “PREMIER” as it appeared in the appellant’s mark had a small floral device on top of it and was written in an entirely different font and style. Upon a cursory examination of the marks, the Court consequently determined that there was no misleading likeness.

The Court cited Vasundhara Jewellers (P) Ltd. v. Kirat Vinodbhai Jadvani, 2022 SCC Online Del 3370, wherein it was noted that the primary objective of comparing conflicting marks was to ascertain whether the marks were deceptively similar when viewed in their entirety by examining the dominant part of the mark. Thus, the Court concluded that the two compound device marks under comparison would unquestionably fall under the anti-dissection rule. 

The Court held that the respondent’s device mark could not be broken down to remove the word “PREMIER” and then matched it to the registered mark of the appellant.

The complainant could not have a monopoly over it because its registered mark was simply a device mark and not a word mark. Accepting the appellant’s argument that “PREMIER” was the predominant mark of the respondent’s mark and hence in opposition to the appellant’s mark would be challenging. 

The respondent’s mark received its meaning from the connected term “LEAGUE,” it could not be detached or removed. “PREMIER” was the designation given to a league that, in the context of football, had gained and accumulated acclaim, goodwill, and instant recall on a global scale.

The Court utilized the case Pidilite Industries Ltd. v. Vilas, the Nemichand Jain, 2015 SCC OnLine Bom 4801, and stated that “just proof like payments, cash figures, and sales weren’t sufficient to show uniqueness, but what required to be accomplished that the mark gained a secondary significance and displaced the primary describing of the mark”. 

The Court said that it is typical for premium sports brands to protect their trademarks since it is evident from an application in Class 25 that the goal of the application was to sell items. 

The trade and profits of sporting organizations now directly correlate with the selling of sports items, and the more famous and well-liked the sporting event. According to the Court, the appellant did not object to the respondent’s mark “BARCLAYS PREMIER LEAGUE” being registered earlier. 

It denied the appellant’s argument that the respondent’s mark was challenged. Opposition should have been submitted right away if “PREMIER” was included in the previous mark of “BARCLAYS PREMIER LEAGUE” and if “PREMIER” constituted the basis for any attempt at distinctiveness.

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