Leeds City FC shown red card 

5th Mar 2019

The Court wasn’t disposed to see the Applicant’s side, says Dale Carter. O/755/18, Leeds City Football Club Ltd v Leicester City Football Club Ltd, UK IPO, 26th November 2018.

O/755/18, Leeds City Football Club Ltd v Leicester City Football Club Ltd, UK IPO, 26th November 2018

Key points

• Visually complex trade marks incorporating an earlier identical mark may be deemed similar where the common verbal element forms a dominant part of the complex mark and the goods/services are identical
• Acronyms that have no obvious connection with the goods and services for which they are registered possess at least an average degree of distinctiveness

In June 2017, Leeds City Football Club Ltd (the Applicant), incorporated in 2003, applied to register the series of marks shown below right, covering classes 16, 25, 26 and 41. Leicester City Football Club Ltd (the Opponent) opposed under s5(2)(b), s5(3) and s5(4) of the Trade Marks Act 1994, based on its LCFC word mark registration covering identical goods and services. The Opponent also asserted bad faith under s3(6), although this claim failed due to lack of supporting evidence. 

Essential element

While the device elements were important in the overall impression of the Applicant’s mark, the LCFC element was likely to be the element pronounced by the average consumer. These letters were centrally positioned, were of a sufficient size to retain an independent, distinctive role, and constituted the dominant verbal element of the mark. The marks were considered to be visually, aurally and conceptually similar. The average consumer of the goods was considered to be the general public, whose level of attention would be normal. For the services in question, the average consumer also included businesses, and the level of attention of the average consumer was deemed to be above average. The goods and services would be selected primarily by visual means, although aural considerations would also play a role.

In finding that a likelihood of confusion existed under s5(2)(b), the Hearing Officer (HO) was mindful of there being no “right way round confusion”, and it was inevitable that confusion would arise if the average consumer were to encounter the Opponent’s mark after the Applicant’s mark on identical goods. 

No finding was made in relation to the opposition under s5(3) and s5(4).

The Applicant, which was not professionally represented, argued that there are various football clubs whose initials are LCFC. If this was an argument that LCFC was non-distinctive, the HO could not reach a finding on this issue in the context of the opposition and in the absence of supporting evidence. Indeed, the HO was required to find that the Opponent’s mark possessed some distinctive character, merely as a consequence of its registration.  

Partisan component

Although the Opponent was successful in blocking registration of the Applicant’s marks, it is unlikely that it would be successful in preventing their use based on the same registration, because of the context in which LCFC would be used. The average football fan would presumably display a very high degree of attentiveness when selecting goods and services of this nature, which would weigh heavily against a finding of confusion. 

Given that the goods and services were primarily selected by visual means and the level of attention of the average consumer was high, it is perhaps a little surprising that the LCFC element dominated the overall impression, rendering ineffective the “striking” and imposing visual elements in the Applicant’s mark.

Dale Carter is a Chartered Trade Mark Attorney and Senior Associate in Reddie & Grose LLP’s trade marks team

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