Bulls shoot and miss: UKIPO rejects invalidity proceedings brought by the NBA
NBA Properties Inc (the National Basketball Association or NBA) has failed in its attempt to have the Pizza Texas Bulls Inc figurative bulls head mark declared invalid.
Pizza Texas Bulls Inc is the registered proprietor of UKTM 3554542, registered in classes 30, 39 and 43 for pizza, pizza delivery and restaurant-based goods and services.
The NBA owns a series of bulls head trade marks used by the Chicago Bulls basketball team, a team notable for its successes in the 1990s when led by Michael Jordan. These marks are registered for various goods and services including sporting and cultural entertainment services under class 41.
The NBA made an application for a declaration of invalidity of the Pizza Texas Bulls Inc contested mark on five grounds:
- Section 5(2)(b) of the Trade Marks Act 1994: likelihood of confusion.
- Section 5(3) of the Trade Marks: reputation and detriment and/or unfair advantage.
- Section 56 of the Trade Marks Act: well-known marks.
- Section 5(4)(a) of the Trade Marks Act: passing off.
- Section 5(4)(b) of the Trade Marks Act: copyright.
Pizza Texas Bulls Inc denied these claims, arguing that the differences between the marks, as well as the goods and services for which they were registered, created no confusion. Interestingly it did not request proof of use of the earlier marks, nor did it submit any evidence of their own.
For its part, the NBA chose not to request a hearing for this opposition, nor did it file written submissions in lieu of this.
Section 5(2)(b) likelihood of confusion
The NBA sought to argue that there is a very strong relationship between sporting/cultural events and food such as pizza. However, the UK Intellectual Property Office (UKIPO) placed no weight on this argument and found the goods and services concerned to be dissimilar. Hence, there was no likelihood of confusion and this claim was dismissed.
Section 5(3) reputation and detriment/unfair advantage
The NBA filed voluminous evidence in its attempts to establish the reputation of the earlier marks such as: promotional materials from UK-hosted matches; broad merchandising and sales figures; social media figures; and viewing figures of matches and other materials such as Netflix’s “The Last Dance” documentary. These materials led the UKIPO to conclude that the earlier marks enjoy only a moderate reputation in the UK in relation to basketball-related entertainment. The registrar pointed out that some of the NBA evidence was too vague, and its failure to contextualise figures damaged its chances of establishing any reputation beyond basketball-related entertainment. When assessing whether a link would be made between the earlier and contested marks the UKIPO found there was a low to medium degree of similarity between the marks themselves, and no similarity between the goods and services for which they were registered. Hence, no link between the marks would be made by the average consumer and this claim failed.
Section 56 well-known mark
This claim requires that either: a) the goods or services be identical or similar and there being a likelihood of confusion; or b) use of the contested mark takes unfair advantage of, or is detrimental to the earlier marks.
Following the reasoning they applied to the two claims above, the registrar dismissed this claim as well.
Section 5(4)(a) passing-off
While the NBA was able to show they had accrued a moderate level of goodwill in relation to their basketball-based business, the UKIPO pointed out that proving a misrepresentation and resulting damage where there is no common field of activity is a heavy burden. Based on a tenuous overlap between the two parties fields of activity, it was considered that members of the public would be unlikely to be deceived into believing Pizza Texas Bulls Inc’s goods would be linked to the NBA. In finding this, the registrar interestingly did not consider the NBA to be a household name in the UK.
On this basis, no misrepresentation or consequent risk of damage was found and this claim was dismissed.
Section 5(4)(b) copyright claim
This final claim concerned the two logos shown below specifically:
Whilst finding that the works qualify as artistic works and are capable of copyright protection, the registrar considered that the similarities between the works and the contested mark were insufficiently close for the purposes of this claim, and were more likely a result of coincidence than copying.
More fundamentally, however, the NBA had failed to file any evidence supporting its claims that it had contracted a Mr Dean Wessel to create the works. The registrar was therefore unsatisfied that the NBA had even demonstrated that it was the owner of the works. Therefore, this claim was also dismissed.
This opposition reiterates not only the need to ensure that evidence critical to support a claim is filed, but also that irrelevant or vague evidence is not filed, as such evidence is equally capable of damaging a claim’s chances of success.
Case details at a glance
Jurisdiction: United Kingdom
Decision level: UKIPO
Parties: NBA Properties Inc v Pizza Texas Bulls Inc
Date: 07 July 2023