A recent trade mark registry dispute involving the logo of world famous basketball team the Chicago Bulls highlights some interesting issues in the differences between the UKIPO and EUIPO forums and the approach in trade mark oppositions to the assessment of the scope of a famous mark.  

NBA Properties, Inc. (on behalf of the Chicago Bulls team) opposed and applied to cancel the EU trade mark application and UK trade mark registration for the sign

in the name of Houston based Pizza Texas Bulls Inc. which covered pizzas, pizza delivery service and restaurant/takeaway services.

The NBA based their opposition/cancellations on a range of grounds (including likelihood of confusion, unfair advantage of mark with repute, passing off and copyright infringement) and signs including a range of bull head logos with or without words including

and  .

The EU opposition succeeded on the basis of unfair advantage of a mark with repute. In contrast, the UK cancellation failed on that and all other grounds.

It was held in both cases (and I feel rightly) that the goods/services covered by the NBA’s trade mark registrations were dissimilar to those in the applied for mark and thus there was no likelihood of confusion possible here.

So the issue was what was the extent of the reputation of the NBA mark and did the Pizza Texas Bulls sign create a link leading to some form of harm such as taking unfair advantage of that repute.

The EUIPO found a high degree of repute in the NBA mark across the EU in relation to “Entertainment; Sporting activities; entertainment services in the nature of ongoing television and radio programs in the field of basketball and rendering live basketball games and basketball exhibitions”. Whereas the UKIPO only found a moderate reputation in the UK in relation to the narrower “entertainment in the nature of basketball games; sporting activities in the nature of running a basketball team”.

The EUIPO was persuaded there was a link between the marks and a chance of harm such as unfair advantage. The UKIPO however held it “highly unlikely that the earlier marks would be brought to mind by the contested mark in the context of the proprietor’s goods and services. If any link is made, it will be too fleeting to result in any damage arising.”

I am not sure this is correct as in my view the NBA mark is brought to mind and it seems there should have been ample evidence and argument to support link and harm given the fame of the brand and the nature of sports licensing.  

These two cases illustrate the need for specialist advice in each forum to best argue your case– for example, I wonder if the UK case would have gone the same way if there had been an oral hearing to thoroughly explore the evidence and tests to be applied.

The cases also raise the issue of making sure you have the right rights– the NBA’s position would have been stronger and more straightforward if they had registrations for their logo extending to classes that are non-core but clearly of interest for licensing and merchandising.

Stobbs has expertise at both the UK and EUIPO and works with many sports brands and personalities.