October 7, 2005
‘Ferguson’ denied trade mark protection
Football manager too famous
With the refusal of his application to register ALEX FERGUSON as a trade mark in the UK, Sir Alex Ferguson has been denied exclusive rights to the use of his own name for photographs, posters and other printed matter by the UK Trade Marks Registry.
The Manchester United manager sought to register as a trade mark his name ALEX FERGUSON in relation to Class 16 goods, which cover ‘printed matter, posters, photographs, stickers, transfers’ and the like.
It is the practice of the Trade Marks Registry to view the names of famous people as mere descriptions of the subject matter of the product. Such names are deemed incapable of fulfilling the main function of a trade mark which is the indication of trade origin of the goods which bear the mark. Potential purchasers would only understand the mark ALEX FERGUSON to designate an essential characterstic of the goods—posters of Sir Alex sold under the mark ALEX FERGUSON would be identified by buyers and sellers as ‘Alex Ferguson’ posters but would not idenfity Sir Alex as the originator of the poster. ‘Alex Ferguson’ is already a widely used description for many traders goods taking the form of photographs, posters or prints.
In his decision, the Hearing Officer cited the European Court of Justice decision in the DOUBLEMINT case that there was a clear public interest in keeping free for all to use certain words and combinations of words that act as ‘descriptive signs or indications relating to the characteristics of goods and services’.
Ferguson’s lawyers argument that there might be an exclusion for goods with certain characteristics was rejected: traders would refrain from making use of the mark ALEX FERGUSON or indeed the likeness of the manager because it was unclear that the mark’s protection did not actually extend to those goods or services for which it was descriptive.
The mark was also devoid of distinctive character. It was not an unusual way of describing goods that could be marketed by the applicant and the mark would not serve to distinguish them from goods offered by others.
The way to overcome these objections, it would appear, is to register your name as a trade mark in relation to posters before becoming well known, as the Chelsea footballer Joe Cole has done.
Sir Alex, like arch rival Jose Mourinho is in the process of applying to register his name as a trade mark across a wide variety of goods and services.