NBA Properties Inc v Pizza Texa Bulls Inc

On an appeal from a trade mark invalidity decision, the appellate court must address the correct marks, goods and services, and statutory test. A well-known mark under Article 6 bis may qualify as an earlier trade mark even where its proprietor’s business and use are outside the United Kingdom. The relevant inquiry may therefore include foreign use and whether a portion of the UK public knows the mark, and for which goods or services.

For section 5(2)(b), the degree of similarity between the competing goods and services is critical. Limited evidence of use for food and beverages did not establish a likelihood of confusion. A section 5(3) claim requires consideration of the full scope of the goods and services connected with the well-known marks, the existence of a link, and the potential for unfair advantage or detriment.

NBA Properties Inc appealed against the decision of the Registrar’s Hearing Officer dated 7 July 2023, which refused its application to invalidate Pizza Texa Bulls Inc’s registration for a red bull’s-head mark used for pizza, food delivery and restaurant services.

The invalidity application relied on sections 5(2)(b), 5(3), 5(4)(a), 5(4)(b) and Article 6 bis of the Paris Convention. On appeal, only the Article 6 bis case was pursued. The central issue was whether the Hearing Officer had considered the correct device marks and the full range of goods and services for which they were alleged to be well-known.

1. Appeal partly allowed. The Hearing Officer had applied the Article 6 bis case to the wrong marks. The case concerned two device marks featuring a red bull’s head, rather than the UK-registered marks previously relied upon under sections 5(2)(b) and 5(3). This error meant that the Hearing Officer also failed to consider the wider goods and services relied upon.
2. For the purposes of sections 5(2)(b) and 5(3), the relevant inquiry could include use of the device marks in the United States, Canada and Europe, and whether a portion of the relevant UK public knew of them because of that use. The Hearing Officer had wrongly focused solely on UK use.
3. Ground 4, concerning section 5(2)(b), was determined by the court rather than remitted. The only potentially similar area was the sale of food and beverages. The evidence consisted of isolated examples over almost 40 years, largely connected with the Chicago Bulls’ own stadium. It did not establish sustained or well-known use in the United Kingdom. The similarity between the competing goods and services was therefore extremely limited and there was no likelihood of confusion. That finding made it unnecessary to decide distinctiveness or mark similarity.
4. Ground 5, concerning section 5(3), was remitted to a new Hearing Officer. The section 5(3) analysis required consideration of the full scope of goods and services connected with the device marks, whether foreign use and reputation had made them well-known in the United Kingdom, whether the average consumer would make a link with the contested mark, and whether use of that mark might take unfair advantage of, or cause detriment to, the device marks.
5. The section 5(3) issue was remitted alone. The evidence and any submissions concerning licensing and sponsorship arrangements, including possible links with food and drink markets, were matters for determination at first instance.

• High Court, Intellectual Property List (ChD): appeal from the Hearing Officer’s decision dated 7 July 2023. The appeal was allowed in part. Ground 4 was dismissed after redetermination, and the issue raised by Ground 5 was remitted to a new Hearing Officer.