Premier League successfully opposes 2 trademark applications

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In October 2016, Sport consultation company-International Group Management Limited(IGML) applied to register the following trademarks for class 41 goods to cover Organisation and regulation of video gaming competitions, none relating to association football;

·        Black circle with the words ‘Esports Premier League’ in white over the circle,

·        The same as above but with black lettering over a white circle on a black background.

The Premier League opposed the applications on the following grounds;

·        That they are visually similar and relate to the same goods and services as the following trademarks-Premier League’ (UK 2,147,888); ‘Fantasy Premier League’ (EU 12,039,251); and the head of a lion next to the words ‘Premier League’ (UK 3,148,844)

·        Premier League's trademarks have been extensively used by the company

·         IGML’s trademarks are likely to cause confusion and take unfair advantage of Premier League’s trademarks

·        Premier League denied that ‘Premier League’ is the dominant and distinctive element of the contested trademarks

In response to the above, IGML stated as follows;

·        The ‘Esports’ element of its marks is descriptive of competitive video gaming however competitive video gaming does not compete with traditional sports.

·        The term ‘Premier League’ is non-distinctive and is in common use to denote top level competition.

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On May 22^nd the IPO ruled in favour of Premier league and cancelled IMGL’s applications citing the following grounds;

·        The applicant’s exclusion of services relating to football is not sufficient to avoid confusion.

·        The words ‘Premier League’ in the contested mark would have caused a significant portion of the public to expect the services to include video gaming competitions based on the Premier League’s online competitions.

·        Average consumers would regard the words Premier League as indicating that there is an economic connection between the users of the marks.

·        The inclusion of the words ‘Esports’ (and/or the device element) in the contested mark would not have been sufficient to counter this impression as there would be a likelihood of indirect confusion.