In a case argued by the Firm, the Delhi High Court has upheld the registration of the ‘Premier League’ trademark saying that the appellants had no monopoly rights over ‘Premier’ per se.
The Football Association Premier League (‘League’) manages the Premier League – the highest level of the English football league system comprising 20 clubs with an unparalleled global fan base (social media followers number over a billion).
The League filed a trademark application in India in Class 25 (No. 1489060 for clothing, headgear, footwear) to register its logo featuring the image of a lion with a crown atop a football along with the words ‘PREMIER LEAGUE’. Upon advertisement, this application was opposed by Premier SPG and WVG Mills Pvt. Ltd. (appellants) on the ground that the mark was phonetically, visually, structurally and deceptively similar to their mark ‘PREMIER’. The Registrar disagreed, rejected the opposition on February 2, 2023 and the League’s mark was allowed to proceed to registration. This occasioned an appeal to the Delhi High Court by the appellants – Premier SPG and WVG Mills Pvt. Ltd. v. Football Association Premier League Ltd. & Anr. C.A.(COMM.IPD-TM) 15/2023 & I.A. 12418/2023.
It was the apellants’ argument that their house mark ‘PREMIER’ and other ‘PREMIER’ formative marks had been registered 1980 onwards and been in prior, continuous and extensive use in India since 1991. In contrast, the League’s application was filed on a ‘proposed to be used’ basis in 2006 and there was little evidence submitted to support claims of immeasurable fame and reputation. The appellants also submitted that since ‘league’ in PREMIER LEAGUE was a common sports term, for the purposes of comparison, the dominant and essential feature of the rival marks was ‘PREMIER’.
According to the League, a search for the word mark ‘PREMIER’ in class 25 returned numerous registrations including its own prior registration ‘BARCLAYS PREMIER LEAGUE’, as well that of ‘INDIAN PREMIER LEAGUE’ [by the Board of Control for Cricket (BCCI)], ‘SRI LANKA PREMIER LEAGUE’, ‘PREMIER GOLF LEAGUE’, ‘PREMIER BADMINTON LEAGUE’, ‘PREMIER SPORTS’ etc. Thus ‘Premier’ was a commonly used generic word particularly in conjunction with sporting leagues around the world and the Registrar had correctly applied the concept of ‘crowded field’ to hold that no exclusivity could be claimed over ‘PREMIER’ by the appellants. Plus, the appellants did not have a separate registration for the word ‘PREMIER’ in class 25 and had not submitted any evidence to demonstrate how the word ‘PREMIER’ acted as a source identifier of their products. Accordingly, the Registrar had correctly viewed the rival marks as a whole and refrained from dissecting them into different components for the purpose of comparison.
The court held that prima facie there was no deceptive similarity between the two marks – the only commonality between them was the word ‘PREMIER’, which indeed was generic in nature. The League’s mark had the word ‘PREMIER’ suffixed by the word ‘LEAGUE’ combined with the device of a lion wearing a crown standing over a football. The appellants’ mark had the word ‘PREMIER’ written in a completely different font and style with a small flower device on top of the word. Given that the appellants had no registration for the word ‘PREMIER’ per se, for the purposes of comparison, the analysis would focus on the composite device marks.
Two principles of trademark law came into play in such a situation – ‘the rule of anti-dissection’ and the ‘identification of dominant mark’ – and both could be applied harmoniously. Conflicting composite marks are to be compared as a whole, rather than breaking the marks up into their component parts for comparison. This is the ‘anti dissection’ rule based upon a common sense observation of customer behavior: the typical shopper does not retain all of the individual details of a composite mark in his or her mind, but retains only an overall, general impression created by the composite as a whole.
Further, a microscopic examination to find differences is unecessary; rather, it should be kept in mind that to the average buyer, the points of similarity are more important than minor points of difference. However, where there are both similarities and differences in the marks, they must be weighed against one another to see which predominate. It is not a violation of the anti-dissection rule to view the component parts (dominant and non-dominant) of both marks as a preliminary step on the way to an ultimate determination of probable customer reaction to the conflicting composites as a whole.
In the opinion of the court, on its own, ‘PREMIER’ was an intrinsically weak trademark and the appellants had not presented any evidence to show that the word had acquired a secondary meaning so as to be identified exclusively with their business.
The court also noted the lack of opposition by the appellants to Premier League’s earlier mark ‘Barclays Premier League’ which subsisted on the trademark register for nearly 10 years and said, “if at all distinctiveness is sought on the basis of the word ‘PREMIER’, an opposition ought to have been filed at that stage itself.”
Further, it was clear that the League’s application in class 25 was for the purposes of selling merchandise, which is a standard industry practice for premium sports brands, and it was nobody’s case that it was planning to get into wholesale manufacture, distribution and export of general clothing goods, which was the business of the appellants.
Basis the aforesaid, the rival marks were found to be dissimilar and the appeal was thus dismissed.
Popularity enjoyed by the ‘Premier League’ aside, this decision has received a lot of attention on account of its detailed analysis of the principles which govern the comparison of composite trademarks.