Full case report

Jules Rimet Cup Ltd v The Football Association Ltd

Reference [2007] EWHC 2376 (Ch); [2008] FSR 10; (2008) 31(1) IPD 31002
Court Chancery Division

Judge Roger Wyand QC (sitting as a Deputy High Court Judge)

Date of Judgment 18 Oct 2007


Summary

Trade marks – Applications – Application for trade marks in ‘bad faith’ – Relevance of legal advice in determining ‘bad faith’

Passing off – Goodwill – Subsistence of goodwill in absence of commercial activity

Copyright – Artistic works – Duration – Exploitation of artistic work by industrial process – S.52, Copyright, Designs and Patents Act 1988 – Infringement – Substantial part

 


Facts

In 2005, three football fans made certain changes to the appearance of the FA’s 1966 World Cup mascot ‘World Cup Willie’ and applied to register their version and the name WORLD CUP WILLIE as trade marks. They hoped to have merchandise with their version of the mascot on the shelves in time for the 2006 World Cup in Germany. They put together marketing material claiming to own ‘exclusive rights’ to the mascot and described it as “one of the UK’s most valuable sporting rights”. Broadcaster Granada acquired a licence to use the mascot but withdrew after the FA informed them of their intention to sue for passing off, copyright infringement and making an application to register a trade mark in bad faith.

JRCL brought an action seeking declarations that their trade mark applications could not be opposed by the FA and relief for unlawful interference with their business.


Issue

(1) Whether copyright had expired after 25 years under s.52 CDPA;

(2) If not, whether JRCL had infringed copyright;

(3) Whether The FA owned sufficient goodwill from use in 1966 for a passing off action in 2005; and

(4) Whether JRCL’s trade mark applications had been made in bad faith.


Held

Finding for the FA:

(1) The FA’s copyright in the mascot had not expired.

(2) JRCL’s ‘World Cup Willie’ was copied from The FA’s original but did not reproduce a substantial part and so did not infringe.

(3) The FA could have prevented the use of the trade mark by JRCL in 2005 by a passing off action.

(4) JRCL’s trade mark applications were made in bad faith.


Comment

This decision is important in respect of each of passing off, trade marks and copyright. In passing off it demonstrates that, in certain circumstances, goodwill in a getup can endure for a very long time despite there having been no commercial activity; in copyright it clarifies the effect of section 52 of the CDPA 1988 relating to the duration of copyright in artistic works; while, perhaps most significantly, in trade marks it establishes that an applicant for a trade mark may rely upon the fact that he sought legal advice as a defence to an allegation of bad faith, but in order to do so must disclose the advice that was sought and the full advice that was received.


Download this Judgment


Instructing Solicitors

BRIFFA for JRCL; Addleshaw Goddard for the FA