HENRY and RONALDINHO trade mark decision highlights need for famous individuals to keep their eye on the ball

Background

In February 2021, Global Trademark Services Limited (GTS) filed United Kingdom trade mark applications incorporating the names RONALDINHO and HENRY (i.e. the names of well-known footballers Ronaldinho Gaúcho and Thierry Henry) in Class 25 (the Applications). The UK Intellectual Property Office (UKIPO) registrar objected under section 3(6) of the Trade Marks Act 1994 stating that there was a "rebuttable presumption of bad faith", which applied unless the applicant provided either an explanation for the application for the famous name or the consent of the famous individual concerned. The hearing officer upheld these objections at an ex-parte hearing. The applicant then appealed, arguing that the hearing officer had effectively conferred a "right to a name" on well-known individuals. 

The Appeal

Geoffrey Hobbs QC, acting as the Appointed Person (the AP) branded the registrar's decision "legally deficient", and set it aside, holding that no rebuttable presumption of bad faith existed. Instead, the AP asserted that there exists a rebuttable presumption of good faith, which an opponent can rebut by filing evidence at the opposition stage of the registration process. By raising bad faith itself, the UKIPO had effectively made a finding of conflict with unregistered rights which had not been asserted by any third party. This approach was at odds with the UKIPO's usual practice of not raising relative grounds objections to trade mark applications.

The AP described the registrar's approach in the matter as one of "investigator-prosecutor-judge-jury-executioner" and held it was not for the registrar to, as it had in this case, treat the applicant as an adversary on behalf of the famous person concerned. Instead, the AP held that it is for the famous person to either oppose an application once published, as it is with all prior rights holders. 

The Applications were remitted to the registrar to continue the application process. 

Comment

It is possible that both trade marks will be opposed once they reach the opposition stage.  Another trade mark filed by GTS, which the UKIPO had allowed to proceed to publication and which was then registered, is now subject to a cancellation action by the footballer concerned, Henrick Larsson.

This decision confirms that the UKIPO cannot, at the application stage, reject trade mark applications because they feature the names of famous individuals and that it is for famous individuals to pro-actively monitor registrations and to then oppose as necessary to protect their personal brands. Like all IP rights holders, famous individuals need to consider their monitoring strategy to ensure they are made aware of applications for any marks that conflict with their rights and that they receive appropriate legal advice. 

If you require assistance in establishing a robust trade mark protection strategy to protect your brand, please contact Fieldfisher's IP Protection team. 

With thanks to trainee, Richard Gorman, co-author of this article.