Victory Score of the Mark “Premier League”: Analysing the Decision of the Delhi High Court

Victory Score of the Mark “Premier League”: Analysing the Decision of the Delhi High CourtThe Single Judge Bench of the Delhi High Court on January 22, 2024, upheld the registration of the mark “PREMIER LEAGUE” in favour of Football Association Premier League in the case of Premier SPG and WVG Mills Pvt. Ltd vs Football Association Premier League Ltd. & Anr [C.A.(COMM.IPD-TM) 15/2023 & I.A. 12418/2023], and stated that monopoly cannot be claimed over the mark “Premier”, per se.

In this case, Football Association Premier League Ltd (“Respondent”/ “Applicant”) filed an application for registration of the mark (the “mark”) on a “proposed to be used basis” in Class 25 for clothing, headgear and footwear. The application was opposed by Premier SPG and WVG Mills Pvt. Ltd. (the “Appellant”/ “Opponent”) on the grounds that the mark was phonetically, visually, structurally and deceptively similar to the appellant’s mark ‘PREMIER’. which was conceived, coined and adopted in 1949, and registered in various classes from 1980 onwards.

The appellant claimed that they are part of the premier group with an international reputation for quality goods in the clothing industry built over the last 70 years. They are manufacturers, exporters, and marketers of yarn, clothing, and hosiery, including suits, shirts, ready-made garments, dhotis, textiles under various marks, etc. The appellant’s house mark “PREMIER” and other formative marks such as has been in prior continuous and extensive use in India since 1991.

On the other hand, the respondent’s mark was filed on a ‘proposed to be used’ basis in 2006 in class 25, which is relatable to the business of the appellant, and the respondent has not submitted any evidence to establish that there was wide and extensive use of the word “PREMIER”.

The respondent submitted that the respondent is a private company headquartered in London wholly owned by 20 member clubs that make up the football league and are the organising body of the ‘Barclays Premier League’. Each individual club works within the rules of football as defined by the Premier League. In connection with this business, the respondent owns and uses the distinctive ‘Premier League’ and other variants. The Premier League marks are marketed, advertised, and extensively promoted and have therefore achieved recognition amongst members of the trade and common consumers in public. The premier league marks have also secured registration in various countries of the world. In India, the respondent is the registered proprietor of the mark “Barclays Premier League” in class 25.

Moreover, there are numerous registrations, including the device which had been registered in class 25, such as ‘Indian Premier League’, ‘Sri Lanka Premier League’, ‘Premier Golf League’, Badminton League’, and ‘Premier Sports’ which reflects that the word “premier” is a commonly used generic word, particularly in conjunction with sporting leagues around the world and therefore has acquired extensive use.

The Registrar of Trademarks rejected the opposition on February 2, 2023, and the mark was allowed to proceed for registration. It stated that there is no phonetic, visual, or structural similarity between the two marks. The only common feature between the two marks is the word ‘PREMIER’, which is a generic word, and no one can have a monopoly over the said word, nor can claim exclusivity on it. Disagreeing with the decision of the Registrar of Trademarks, the appellant filed an appeal before the Delhi High Court against the registration of the mark.

Analysis and Decision of the Delhi High Court

The Delhi High Court dismissed the appeal filed by the appellant against registration of the mark and allowed the Mark of the Respondent for registration. The Court stated that the device mark ‘Premier’ and the device mark ‘Premier League’ were not deceptively similar.

In order to come to this conclusion, the Delhi High Court, inter alia, analysed “the rule of anti-dissection” and the “identification of dominant mark” as referred to in the case of South India Beverages v General Mills Marketing [2014 SCC OnLine Del 1953], wherein it was stated that the “the rule of anti-dissection” and the “identification of dominant mark” will have to be examined for comparison of composite marks. These principles were also referred to in the case of Vasundhara Jewellers Pvt. Ltd. vs Kirat Vinodbhai Jadvani and Ors [(2022) SCC Online Del 3370], and it was held that “it was not permissible to hold that two competing marks are deceptively similar by examining a portion of one mark and comparing it with the portion of another mark, if the composite marks viewed as a whole are dissimilar.

Consequently, the Delhi High Court opined that the rules of anti-dissection apply to the two composite device marks being compared. Thus, the device mark of the respondent cannot be dissected to pluck out the word “PREMIER” and then compared with the appellant’s registered mark. Also, the mere fact that the word “PREMIER” forms the dominant part of the respondent’s mark does not necessarily give rise to a conclusion that the respondent’s mark is deceptively similar to the appellant’s mark. In the case of composite marks, the marks will have to be tested on an overall comparison.

The Court also relied on the case Pidilite Industries Ltd. v. Vilas Nemichand Jain, 2015 SCC OnLine Bom 4801, wherein it was stated that “mere evidence of invoices, financial figures, and sales is not enough to show distinctiveness, but what needs to be achieved is that the mark has acquired secondary meaning and displaced the primary descriptive meaning of the mark”. Therefore, though the appellant’s mark has been registered and used by the appellant, it does not make the appellant’s mark distinctive. The distinctiveness of the appellant’s mark lies in the arrangement of the various elements. The word ‘PREMIER’ is written in a particular style and fashion along with the flower device, whereas the respondent’s mark has a completely distinctive element using the lion wearing a crown and standing over a football, as well as using the word ‘LEAGUE’ along with ‘PREMIER’, which signifies the industry of football.

The Court agreed that the appellant’s registered mark is a device mark and not a word mark, and the respondent cannot have a monopoly over the word ‘PREMIER’ considering that it is a word of general use and common to trade. Also, the word ‘PREMIER’ refers to the category of a league, a special kind of league which, in the context of football, has acquired worldwide recognition, goodwill and immediate recall.

In addition, the Court opined that an application in class 25 is for the purpose of selling merchandise and selling sports merchandise goods is a standard industry practice for premium sports brands. Thus, it is normal to protect the same. Further, the word ‘PREMIER’ was also contained in the respondent’s earlier mark of ‘BARCLAYS PREMIER LEAGUE’ and subsisted on the trademark register for at least a period of 10 years. For claiming distinctiveness over the mark, the appellant should have filed an opposition/rectification. However, no such steps were taken by the appellant.

The Court also took note of the extensive worldwide registrations of the respondent’s trademark in various countries across continents, thereby reinforcing the respondent’s right of registration over the mark. The decision of the Court determines that exclusivity or monopoly cannot be claimed over words of general use and common to trade, and the “rule of anti-dissection” is pivotal for the comparison of conflicting composite marks.

Authors: Manisha Singh and Angelina Talukdar

First Published By: Mondaq here