The recent contest between Chelsea Football Club and Benetton Holdings illustrates the point perfectly.
Chelsea filed a UK trade mark application for their Chelsea Supporters Trust logo covering a wide variety of goods, including those in Class 25. Benetton owned an old (1983 dated) UK trade mark registration for Chelsea Man claiming goods in Class 25.
On the face of it, Benetton only had to pass the ball into an open goal to claim victory. But wait a minute, the opponent’s registration was subject to a disclaimer which meant that their registration gave “no right to the exclusive use, separately, of the words “Chelsea” and “Man””.
A sturdy defence therefore appeared from nowhere to defend the Chelsea FC goal. Not only that but, following the earlier decision in Paco/Paco Life in Colour (2000 RPC 451), the UK Trade Mark Office’s practice manual contained the following entry:
“Where the only component of the earlier trade mark which could be regarded as creating a similarity with the later trade mark is the subject of a disclaimer to any exclusive right, the examiner will not consider the marks to be similar enough to create a likelihood of confusion”.
The correctness of this practice was confirmed by the English High Court in the case of General Cigar v Partagas y Cia (2005 EWHC 1729 (Ch)).
So, not only were the football club able to stop their opponent hitting the back of the net, they were able to break away themselves and score a last minute winner. Or, in trade mark terms, they were able to persuade the Hearing Officer (Mr Allan James) that the distinctive character of Benetton’s mark resided in the combination (Chelsea Man) and not in either of those words alone. This finding was fatal to Benetton’s chances and they lost the opposition.
It was not reported whether or not the opponent was gutted. They had certainly had a bad day at the office and perhaps had even lost the dressing room. Still, you win some, you lose some and they can now concentrate on the league. It’s a funny old game, Saint.