TRADE MARKS – CONFUSION – UNITED – PRIOR REGISTRATION OF MANCHESTER UNITED

R’s application to register the mark UNITED for bottled beer and non alcoholic drinks in Class 32 was opposed by MU, a football club, on the ground of its prior registration of the mark RED TRIBE for beers in Class 32 and word and badge marks consisting of “MANCHESTER UNITED” for non alcoholic drinks in Class 32. MU contended that it had acquired a close association with the word UNITED because of its football tradition and that there was a likelihood of confusion with its own marks if R’s registration was allowed, especially if R were to use the mark on a red background.

Held, dismissing the opposition, that (1) the RED TRIBE mark had no bearing on the opposition; (2) the distinctiveness of the MANCHESTER UNITED mark subsisted in the entire mark, and not simply in the word UNITED, which MU shared with other clubs; (3) it was unlikely that the marks would be confused looking at the matter globally in terms of the perception of an average consumer, based on an assessment of the similarities between the marks and the degree of possible association in the public mind, Sabel BV -v- Puma AG (C251/95) [1997] E.C.R 1-6191 and Canon Kabushiki Kaisha -v- Metro Goldwyn Mayer Inc (C39/97) [1998] All ER (EC) 934 applied); (4) MU had no trade mark registration for the colour red, which was also used by other football clubs. Further the likelihood that R would print UNITED on a red background was not a point to be considered, and (5) there was no evidence to show that MU could succeed in an action for passing off should R use the UNITED mark.

RYGRANGE LTD’S TRADE MARK APPLICATION [2001] E.T.M.R. 78, M Reynolds, TMR

“Current Law” October 2001