Alan Finch registered the badge of the CBD,
the former governing body for sport in Brazil, in 2002 as a trade
mark. The badge is not the current Brazilian team's badge because
the CBD changed its name to the CBF, but it is the badge worn by
famous teams such as that which won the 1970 World Cup with Pele as
an inspirational team member.
In an appeal from a Hearing Officer into
Finch's registration and use of the badge as a trade mark the High
Court found that Finch's registration was invalid.
Finch had licensed the badge for use by The
Old Fashioned Football Shirts Company (TOFFS) but his trade mark
had been challenged by Score Draw, another manufacturer of vintage
replica shirts.
Mr Justice Mann found that the badge did not
function as a mark of origin of trade. Referring to a previous case
involving football club Arsenal, Mann said in his judgment: "the
insignia or name of a football club can denote both trade origin
and allegiance to the club. It is of the essence of a trademark
that it fulfils the former function."
"I accept, of course, that the mere fact that
the badge has not been used as a trade mark hitherto does not mean
that it cannot acquire that use. However, the position in the case
of the CBD badge is different," said Mann. "Its use has plainly not
been that, and its actual use has caused it to acquire a
familiarity which means it will inevitably be associated, by the
relevant public, with the historic Brazilian football teams. I find
that on the evidence that use has robbed the badge of its power to
be distinctive of trade origin."
Mann said that on the grounds of
characteristics the trade mark registration was also flawed. The
Hearing Officer had said that the badge was used as "decoration",
but Mann said it was more important than that and that the trade
mark should be excluded on the grounds of characteristics.
Score Draw argued that the use of the badge
had become part of the custom of the trade, and was therefore not
something that it was possible to trade mark. Mann, saying that
'the trade' was the trade in replica football shirts, agreed with
the Hearing Officer that this argument was flawed.
"The use of the CBD badge in this trade is not
there through custom. It is there through necessity – it has to be
used to achieve the fullest degree of authenticity," said Mann. "It
would be a misuse of the word 'customary' to describe its use in
that way. It is no more customary than it is customary to use
yellow and green (Brazil's primary shirt colours) on a replica
shirt. Those colours are not used because of a trade usage; they
are used because if you don't use them you will not sell any
replica shirts of that kind, because the shirt will not have the
right quality as a replica."
"The fact that it is always done does not make
it customary (or habitual, to use a possible synonym). Its use is
not attributable to custom; it is attributable to commercial
necessity," he said.
Score Draw also tried to argue that the trade
mark was registered in bad faith. The argument made had changed
since the Hearing Officer's hearing, though, and Mann said that it
was not appropriate to hear the new argument in an appeal.
Mann allowed the appeal and said that the
trade mark was invalid.
