FA saves ‘World Cup Willie’

In an important trade mark, copyright and passing off decision, the High Court decided today that, 40 years after England’s historic 1966 World Cup win, the Football Association could prevent pretenders from registering the tournament mascot ‘World Cup Willie’ as a trade mark.

In 2005, three fans from Birmingham made certain changes to the appearance of the FA’s 1966 lion mascot ‘World Cup Willie’ and applied to register their version with the name WORLD CUP WILLIE as a trade mark. They put together their own 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 ‘new’ Willie but withdrew from the deal upon being informed of the FA’s rights and the FA’s intention to sue the company formed by the fans for passing off, copyright infringement and making an application to register a trade mark in bad faith.

The case highlights the marketing potential of retro football images and the decision vindicates the FA’s moves to block the fans’ unlawful memorabilia, the enduring nature of goodwill in a brand and what it means to apply for a trade mark ‘in bad faith’.

The decision is important in the following respects:

• it shows that, in certain circumstances, goodwill in a brand can endure for a very long time even without any commercial activity;
• it clarifies the position under s.52 of the Copyright, Designs and Patents Act 1988 whereby the term of copyright protection for an artistic work that has been exploited by an industrial process may be reduced to 25 years; and
• it recognises, for the first time, that an applicant for a trade mark may rely upon the fact that he sought legal advice as a defence to an allegation that he applied for a trade mark in ‘bad faith’.

Click here for the 5RB case report and full judgment.

5RB‘s Madeleine Heal (instructed by Addleshaw Goddard) represented the FA. Steven Reed, at the time a pupil at 5RB, appeared with her.

Links

• Fight for mascot – Jules Rimet loses the second leg – IPKat