The fight for the unregistered trade mark ‘R10’

An unregistered trade mark is only protected by the common law tort of passing off and section 5(4)(a) of the Trade Marks Act 1994 prevents the registration of a mark by virtue of passing off of an unregistered trade mark. The proprietor of the unregistered trade mark must, through factual evidence, prove that the trade mark is established and has acquired a reputation and/or goodwill in the mind of the relevant public, that the offending trade mark has been, or is likely to be, confused with the established trade mark and that the business, under which the trade mark is established, has been, or is likely to be, “damaged” by use of the offending trade mark. If the proceedings are successful, the offending trade mark will not be registered, or alternatively, will be removed from the Intellectual Property Office’s register.

In January 2006, an application for the Community trade mark ‘R10’ was filed. ‘R10’ is the distinctive sign for the former Brazilian football player Ronaldo de Assis Moreira (Ronaldinho). ‘R’ stands for Ronaldinho and ‘10’ for the number he used when he played for Brazil and numerous clubs. The application was however made by a person who had nothing to do with Ronaldinho.

DL Sports owned several Ronaldinho-related rights and therefore opposed the registration of the ‘R10’ trade mark on the basis of their Spanish ‘R10’ unregistered trade mark. DL Sports were given a period of time to prove the existence and validity of their implied non-registered ‘R10’ trade mark but failed to submit evidence.

Meanwhile the opposition, DL Sports transferred to Nike various trade marks and trade mark applications covering the ‘R10’ sign in the US, Europe and Argentina along with “all rights, titles and interests related to the above mentioned trade marks”. Nike joined the opposition in DL Sports’ place in the belief that the agreement had also transferred the ownership of the Spanish unregistered trade mark.

The Opposition Division rejected the opposition on the ground that DL Sports had not substantiated the exercise of the earlier unregistered right. The appeal to the First Board of Appeal was considered inadmissible without hearing the parties, as the agreement between DL Sports and Nike did not mention the ‘R10’ unregistered trade mark, Nike was therefore not qualified to be a party to the opposition.

The General Court found that Nike’s right of defence had been valuated due to the lack of opportunity to present its comments or produce additional evidence. The Court of Justice of the European Union set aside the General Court’s decision and remitted the question for an assessment on the merit of whether the assignment of the “R10” unregistered trade mark actually took place under the agreement between DL Sports and Nike.

It was found that unregistered trade marks, like registered trade marks, must be explicitly mentioned in a transfer agreement for an assignment to take place. The agreement between DL Sports and Nike did not mention any unregistered trade marks, no right was therefore assigned and Nike had no title to appeal the Opposition Division decision to the Board of Appeal.

This case has clarified that non-registered trade marks needs to be specifically mentioned for an assignment to take place and this mentioning should involve all existing rights on a certain sign.

This article was written by Malin Persson who is on work experience and is currently studying at Southampton Solent University. If you have any questions concerning this article please contact Michael Coyle at info@lawdit.co.uk