Score Draw Ltd v Finch

A sign may lose its capacity to indicate trade origin where extensive third-party use has caused the relevant public to understand it as identifying a team, affiliation or historical subject matter. That conclusion depends on the evidence and is not established merely because a sign also conveys allegiance. A sign may be descriptive of an “other characteristic” of goods where it conveys their subject matter or association. Use is not customary merely because traders consistently use a sign; the use must arise from trade custom rather than commercial necessity. On the evidence, the badge was non-distinctive and descriptive of a characteristic of replica Brazilian football clothing.

Score Draw Ltd appealed against a Hearing Officer’s decision dismissing its application to invalidate Alan Finch’s registration of the former Brazilian football governing body’s badge for sports and leisure wear. The grounds relied on sections 3(1)(b), (c), (d) and 3(6) of the Trade Marks Act 1994. The Hearing Officer had found that the badge remained capable of indicating trade origin, was not descriptive, had not become customary in the trade, and had not been registered in bad faith. Mann J treated the appeal as a review and considered whether the evidence had been properly assessed.

1. The appeal was allowed and the registration was declared invalid.

2. The Hearing Officer had materially undervalued the evidence of use of the badge on replica Brazilian football clothing, including sales by Score Draw, TOFFS and others. That error entitled the court to reconsider the relevant issues on the evidence.

3. Under section 3(1)(b) of the Trade Marks Act 1994, distinctiveness requires capacity to identify goods as originating from a particular undertaking. A sign may initially be capable of that function but lose it through third-party use or other factors. The badge’s established association with historic Brazilian football teams meant that the relevant public understood it as indicating team affiliation or historical authenticity, not trade origin. The cases concerning football-club insignia, including Arsenal Football Club Plc v Reed and Tottenham Hotspur plc v O’Connell, were distinguishable because the signs in those cases performed both functions.

4. The objection under section 3(1)(c) also succeeded. “Other characteristics of goods” is broad enough to include subject matter or association. The badge conveyed that the clothing was, or was associated with, historic Brazilian national-team clothing. It was therefore descriptive of a characteristic of the goods.

5. The objection under section 3(1)(d) failed. The badge was used because it was commercially necessary to make replica clothing authentic, not because its use had become customary in the trade. Repeated use did not itself establish custom.

6. The bad-faith ground was not determined. The case advanced on appeal differed from that presented below, and the new allegation would have required factual investigation, including possible cross-examination. It was unnecessary to decide the issue in view of the conclusions under sections 3(1)(b) and (c).

High Court (Chancery Division): Mann J reviewed the Hearing Officer’s decision dated 3 August 2006, allowed the appeal, and declared the trade mark invalid.