Background

The NBA applied to have the contested mark invalidated on a variety of grounds relating to its own registered and unregistered marks for the Chicago Bulls basketball franchise logo, however all grounds were unsuccessful.

Appeal

The appeal brought by the NBA related only to its section 56/Article 6bis well-known mark claim. The NBA contended this claim related only to two unregistered marks known as the device marks, and that the hearing officer had erred by treating these together with its various UK registered trade marks, rather than separately.

Article 6bis confers protection on marks which are well-known in the UK, regardless of whether there is any related business or goodwill. The NBA should have been able to rely on evidence of use of the device marks outside the UK (notably in the US where use was far more extensive) in showing the marks were well-known in the UK.

Article 6bis allows for the proprietor of a well-known trade mark to restrain use of an infringing mark on the basis of confusing similarity and/or detriment to reputation.

Decision

The judge agreed with the NBA and found the hearing officer had failed to treat the device marks separately.

However, when addressing whether, in light of the additional evidence at the NBA’s disposal, there was a likelihood of confusion, the judge still found there to be very limited overlap in the services for which the competing marks are used, hence this ground of appeal failed.

The judge declined to reach a decision regarding the detriment to reputation ground brought in the context of Article 6bis, and remitted this for hearing by a different hearing officer.