The National Basketball Association (NBA) has recently failed in its attempt to invalidate the Pizza Texas Bulls Inc figurative UK trade mark. The UKIPO dismissed the NBA’s application for invalidation and the Pizza Texas Bulls figurative mark will therefore remain registered in the UK. Contrastingly, in earlier EUIPO opposition proceedings, the NBA successfully opposed the registration of Pizza Texas Bulls’ corresponding EU trade mark.

Background

The NBA owns several UK and EU trade mark registrations for the below bull’s head logo used and made famous by the Chicago Bulls basketball franchise. In UK invalidity proceedings, they relied on six earlier marks in total, which had registration dates ranging from 1996 up to early 2018. In EU proceedings, they relied on several trade marks and non-registered signs. However, the EUIPO considered that it would be most expedient to analyse only the most effective earlier mark, which was the below earlier figurative mark of the coloured bull’s head logo, which had a filing date of 2015.

These logos gained particular notoriety in relation to Class 41 sporting and cultural entertainment services on the back of the team’s wildly successful period in the 90’s, led by Michael Jordan. The popularity of these marks also experienced a resurgence from the recent Netflix documentary on the Chicago Bulls, ‘The Last Dance’. 

Pizza Texas Bulls Inc are the owners of the below UK and EU trade mark, registered in Classes 30, 39 and 43 for various pizza, pizza delivery and restaurant related goods and services. While the company now appears to be insolvent, they are still within the five-year period to begin the use of their mark for the relevant Class 30, 39 and 43 goods and services. Despite the apparent lack of use of the mark and the potential insolvency of the applicant, it was still in the NBA’s interests to attempt to invalidate this mark. This is because there is a risk that this mark could potentially be acquired by another company in an insolvency and then be used. 

Claims 

The NBA made several claims in their application for invalidity in the UK. In total, there were five grounds relied upon in the UK, three of which overlapped with their grounds for opposition relied upon in EU proceedings.: 

1. That there is a likelihood of confusion between the respective marks based on Section 5(2)(b) of the Trade Marks Act 1994. This was also claimed under Article 8(1) of the EU Trade Marks Regulation (EUTMR) in the corresponding EU proceedings. 
2. That there is a reputation in the earlier marks relied on in the UK and that the use of the contested mark would take unfair advantage of and/or be detrimental to the reputation vested in these earlier marks in accordance with Section 5(3) of the Trade Marks Act. The NBA also relied on this as a ground for opposition in EU proceedings under Article 8(5) EUTMR. 
3. That their earlier marks are protected under the law of passing off under Section 5(4) of the Trade Marks Act. The corresponding EUTMR provision is Article 8(4), which protects marks whose use during the course of trade amounts to more than mere local significance. This was also relied upon by the NBA in EU opposition proceedings. 
4. That the logos of two of the earlier marks relied on are protected by copyright and that the use of the contested mark should be prevented accordingly, as per Section 5(4)(b) of the Trade Marks Act.
5. That the earlier marks are well-known under Article 6bis of the Paris Convention. 

UK Decision

• The UKIPO held that since there is no overlap in the respective registered goods and services between the respective marks, there can be no likelihood of confusion. The test for establishing a likelihood is a global assessment, which takes into account all of the relevant factors. For this global assessment to be satisfied, there must be some degree of similarity in the goods or services and this claim was accordingly dismissed by the UKIPO. This is despite the NBA’s attempt at arguing that there is some overlap between Class 41 services such as entertainment and sporting activities with goods and services relating to Pizza in Classes 30, 39 and 43.

• The vast amounts of evidence submitted by the NBA led the UKIPO to conclude that their earlier marks do indeed enjoy at least a moderate reputation in the UK in relation to the relevant Class 41 services. This evidence consisted of various articles such as use of the   logos on television broadcasts, evidence of revenue generated from such broadcasts, online subscription figures, turnover and revenue from Chicago Bulls related merchandise and social media figures. However, despite the moderate reputation enjoyed by the earlier marks, the similarities with the contested mark were not sufficient to conclude that the relevant public would establish a link between them. 

• Similarity, the UKIPO dismissed the NBA’s claim of passing off. While the earlier marks were found to enjoy a degree of goodwill, the UKIPO did not conclude that the NBA had proven that there was misrepresentation leading to damage. This was on the basis of the lack of a common field of activity between the respective parties.

• The claim that two of the earlier marks were protected under copyright was also dismissed. Whilst these logos are capable of copyright protection, the NBA concluded that the similarities between the contested mark and the earlier marks was not sufficient for this claim to be successful. Further, the NBA failed to evidence that they had contracted an artist to create these works and therefore failed to evidence that they were even the rightful owners of the copyright vested in these logos. 

• The UKIPO also dismissed the claim that the marks were well-known on the basis of the lack of similarities between the goods and services, which is essential for this claim to be successful.

EU Decision 

In contrast, the EUIPO Opposition Division came to a very different conclusion. On the basis of the vast amounts of evidence submitted, it was held that the NBA’s mark enjoys a high degree of recognition and reputation amongst a substantial part of the relevant public in the EU. The UKIPO merely considered there to only be a moderate reputation. 

The EUIPO decision also differs from the UK in that the respective signs were held to be visually and conceptually similar to at least an average degree. Whilst it was acknowledged that there are no clear similarities in the respective goods and services, The EUIPO Opposition Division held that the high degree of recognition and reputation enjoyed by the NBA’s mark and the degree of visual and conceptual similarities was sufficient to establish a link between the marks. Therefore, it could be said that the use of Pizza Texas Bulls’ mark would take unfair advantage of, or be detrimental to the distinctive character and/or reputation of NBA’s earlier marks. 

Accordingly, the EUIPO Opposition Division found the opposition to be well founded on the basis of Article 8(5) and Pizza Texas Bulls’ application was rejected. 

Comment

The UK case outlines how difficult it can be for rightsholders to enforce their trade mark rights over third parties who operate in entirely separate areas. Whilst the Chicago Bulls and their respective logos are undoubtedly well-known, the NBA failed in this case to sufficiently draw a link between basketball and sports entertainment with pizza and restaurant related goods and services. Tangential links may not be sufficient for rightsholders to successfully assert their trademark rights in opposition or cancellation proceedings. As in this case, this will even apply where some visual, aural and conceptual similarities can be found between the respective marks. 

Accordingly, it is crucial that when rightsholders are seeking to obtain trade mark protection, that their list of goods and services is sufficiently broad to cover any goods or services which they offer at the time of filing, or for which they may begin offering at any time five years after filing. 

However, the corresponding EU opposition also indicates how there can be a divergence of opinion between the respective jurisdictions when it comes to the enforcement of trade mark rights. It is important for rightsholders to understand that success at the EUIPO will not automatically lead to a similar decision from the UKIPO, or in another territory. 

Both cases also provide a succinct commentary on the importance of the global assessment in finding a likelihood of confusion. Despite similarities being found in the respective marks, the tenuous link between the respective goods and services rendered there to be no likelihood of confusion in the UK decision. This was crucial for the outcome of the case, as many of the NBA’s other claims, such as for passing off and their earlier marks having a reputation, hinge upon the finding that there are some similarities in the goods or services. However, the NBA being successful in the EU can be attributed to the finding of similarities between the respective marks, without which the opposition would have been held to be unfounded.