Rangers beat trademark opposition
Rangers Football Club has won a trademark opposition against a street trader who had tried to stop it from trademarking “RFC” and “R.F.C” as a series of trade marks.
The club applied for official registration of the letters as a trade mark in order to sell its merchandise and prevent others from benefiting from its name in the United Kingdom. Amongst other goods, the trademark application covered keyrings, flags and rugby shirts.
However, Russell Campbell, a Glasgow street vendor who sells unofficial merchandise, opposed the club’s trade mark application based on sections 3(1)(b), (c) and (d) of the Trade Marks Act 1994 (“the 1994 Act”). As part of the grounds to the opposition, Mr Campbell argued that the letters “RFC” were not exclusive to the club and were an abbreviation for “rugby football club”. As a result, the mark is devoid of distinctiveness, descriptive and commonly used by sports teams.
Mr Campbell filed evidence in support of his opposition, but Rangers did not.
The UK Intellectual Property Office (IPO) found in favour of Rangers last year and ordered Mr Campbell to pay the Ibrox club £800 in legal costs. Mr Campbell was, however, granted an appeal hearing by the IPO, where he has now been unsuccessful.
On an appeal to the Appointed Person, Mr Hobbs found that the original hearing officer at the IPO had erred by not considering Mr Campbell’s evidence relating to the letters ‘RFC’ being used by a large number of clubs who participate in the sport of rugby (for example, Aberdeenshire RFC, Dundee Wasps RFC and Melrose RFC).
However, once remitted to the IPO, the Hearing Officer dismissed all the opposition grounds.
The appeal outcome means that Rangers can take legal action against individuals such as Mr Campbell who make unauthorised sales of goods protected by, and bearing, the letters ‘RFC’.
Interestingly, as part of the trade mark application process, the club were required to overcome an objection raised by the IPO’s examiner under sections 3(1)(b) and (c) of the 1994 Act, an objection based on ‘RFC’ being a common abbreviation for ‘Rugby Football Club’. The qualification to the trade mark specification had an apparent intention to limit the goods to the field of soccer (association football) and, therefore, avoid the rugby football objection.
Despite the soccer qualification highlighted above, Mr Campbell lodged his opposition which was inevitably going to fail.
For advice on opposing a trade mark application or defending a trade mark opposition, contact us.