The Delhi High Court, recently, dismissed an appeal filed by Premier SPG and WVG Mills Pvt. Ltd. (“Appellant”) against an order of the Trade Marks Registry (“Registry”) rejecting its opposition against The Football Association Premier League Limited’s (“Respondent”) PREMIER LEAGUE logo, in Class 25.
The Registry had, in its order, observed that there was no visual, structural, or phonetic similarity, between the rival marks, and that the only common element between the two marks, i.e., PREMIER, is generic, which no one could monopolize. However, the Appellant claimed that it is a part of the Premier Group that has an international reputation, which has been built over several decades, for quality goods in the clothing industry, and that its PREMIER-formative marks were registered in relation to manufacturing, exporting, and marketing of yarn, clothing, hosiery, suiting, textiles, etc., much prior to the Respondent’s filings.
The court took into consideration the Respondent’s registration for the BARCLAYS PREMIER LEAGUE Device mark (which was unopposed by the Appellant), the Respondent’s long use of its marks without any objection from the Appellant, the presence of other third-party marks on the Register of Trade Marks containing the word PREMIER, as well as the Respondent’s worldwide repute and registrations in foreign jurisdictions.
The court opined that there was no deceptive similarity between the rival marks. It reiterated the anti-dissection rule of comparing rival marks, emphasizing that the Appellant could not have a monopoly over the word PREMIER, and also noted that PREMIER was also not the dominant element of the PREMIER LEAGUE logo. Besides the word PREMIER, the Respondent’s mark incorporated the suffix LEAGUE, a lion wearing a crown, and a football, which indicated that the Respondent’s goods pertained to the football sector. The court also noted that PREMIER refers to the category of a league, which, in the context of football, has acquired and amassed worldwide recognition, goodwill and immediate re-call. Based on the above, the court agreed with the Registry’s order and dismissed the appeal.