A British man's registration of a classic Brazilian football badge as a trade mark has been declared invalid. The man cannot exclusively license the now-disused badge to makers of 1970s-style replica Brazil football shirts.
Alan Finch registered the badge of the CBD, the former governing body for sport in Brazil, in 2002 as a trade mark. The badge is not the current Brazilian team's badge because the CBD changed its name to the CBF, but it is the badge worn by famous teams such as that which won the 1970 World Cup with Pele as an inspirational team member.
In an appeal from a Hearing Officer into Finch's registration and use of the badge as a trade mark the High Court found that Finch's registration was invalid.
Finch had licensed the badge for use by The Old Fashioned Football Shirts Company (TOFFS) but his trade mark had been challenged by Score Draw, another manufacturer of vintage replica shirts.
Mr Justice Mann found that the badge did not function as a mark of origin of trade. Referring to a previous case involving football club Arsenal, Mann said in his judgment: "the insignia or name of a football club can denote both trade origin and allegiance to the club. It is of the essence of a trademark that it fulfils the former function."
"I accept, of course, that the mere fact that the badge has not been used as a trade mark hitherto does not mean that it cannot acquire that use. However, the position in the case of the CBD badge is different," said Mann. "Its use has plainly not been that, and its actual use has caused it to acquire a familiarity which means it will inevitably be associated, by the relevant public, with the historic Brazilian football teams. I find that on the evidence that use has robbed the badge of its power to be distinctive of trade origin."
Mann said that on the grounds of characteristics the trade mark registration was also flawed. The Hearing Officer had said that the badge was used as "decoration", but Mann said it was more important than that and that the trade mark should be excluded on the grounds of characteristics.
Score Draw argued that the use of the badge had become part of the custom of the trade, and was therefore not something that it was possible to trade mark. Mann, saying that 'the trade' was the trade in replica football shirts, agreed with the Hearing Officer that this argument was flawed.
"The use of the CBD badge in this trade is not there through custom. It is there through necessity – it has to be used to achieve the fullest degree of authenticity," said Mann. "It would be a misuse of the word 'customary' to describe its use in that way. It is no more customary than it is customary to use yellow and green (Brazil's primary shirt colours) on a replica shirt. Those colours are not used because of a trade usage; they are used because if you don't use them you will not sell any replica shirts of that kind, because the shirt will not have the right quality as a replica."
"The fact that it is always done does not make it customary (or habitual, to use a possible synonym). Its use is not attributable to custom; it is attributable to commercial necessity," he said.
Score Draw also tried to argue that the trade mark was registered in bad faith. The argument made had changed since the Hearing Officer's hearing, though, and Mann said that it was not appropriate to hear the new argument in an appeal.
Mann allowed the appeal and said that the trade mark was invalid.