23/10/2018
Rangers Football Club has secured registration of the mark ‘RFC’ for a range of goods including jewellery, watches, towels, flags, bedding, clothing (incl. rugby shirts), footwear and headgear (classes 14, 24 and 25).
Most sports fans would understand the letters ‘RFC’ as an abbreviation for ‘rugby football club’, including the trade mark examiner who objected to the mark on the basis that it lacked distinctive character and was descriptive of goods associated with a rugby football club.
Rangers overcame that objection by qualifying that their goods “all relate to or for the promotion of football (soccer)” , thereby making the distinction that the goods are not for rugby football.
Rangers’ next hurdle was an opposition by Mr Russell Campbell. Campbell had a vested interest in ‘RFC’ because he sells unofficial Rangers merchandise badged with the letters ‘RFC’.
Despite the soccer restriction, Campbell still claimed that ‘RFC’ is an abbreviation for ‘rugby football club’ and is not exclusive to Rangers Football Club. He argued that ‘RFC’ lacked distinctive character, is descriptive and has become customary because it is commonly used to refer to a ‘rugby football club’.
In support of his arguments, Campbell filed evidence showing examples that amateur and professional rugby clubs use the letters ‘RFC’ as an abbreviation for ‘rugby football club’ eg. Aberdeenshire RFC, Dundee RFC and Melrose RFC. The evidence showed that the names are used generally, and also on items of clothing such as sweatshirts, shirts, ties, replica jerseys, hats and so on.
Campbell also filed evidence of his use of the mark ‘RFC’ on his merchandise.
Rangers didn’t file any evidence but relied on paper based arguments alone.
The UKIPO then effectively had two goes at deciding the case. On both occasions the mark ‘RFC’ was found to be accepted for all goods applied for.
Round 1: the Hearing Officer rejected Campbell’s opposition. Campbell appealed to the Appointed Person before Mr Geoffrey Hobbs QC, who decided that the Hearing Officer had not given real and sufficient weight to the significance of the letters ‘RFC’ as an abbreviation for ‘rugby football club’. The matter was remitted to another Hearing Officer.
Round 2: Campbell tried to bring in new arguments that Rangers had filed for ‘RFC’ in bad faith. Campbell failed to meet procedural requirements so the bad faith claim was not admitted. The new Hearing Officer also rejected Mr Campbell’s opposition. Again, Campbell appealed to the Appointed Person, before Mr Daniel Alexander QC who rejected the appeal and allowed the mark to proceed to registration.
Is ‘RFC’ descriptive of the characteristics of the goods (clothing etc)? → No, because:-
- ‘RFC’ is used as an abbreviation to describe the services of rugby football clubs;
- ‘RFC’ is not used as a description of the goods applied for, even for specific rugby clothing;
- ‘RFC’ relates to a club, not the sport of rugby itself;
- even if ‘RFC’ is used descriptively to mean ‘rugby football club’, there is a sufficiently low prospect of use of ‘RFC’ alone so can still technically be registrable; and
- no one would describe clothing as suitable for ‘RFC’.
Is ‘RFC’ a customary term commonly used in trade? → No, because:-
- the evidence showed that ‘RFC’ is always used as part of a longer name eg. Aberdeen RFC;
- no evidence of use of ‘RFC’ alone; and
- even when ‘RFC’ is used, it designates the nature of the particular sporting club. Not the goods.
Does ‘RFC’ lack distinctive character? → No, because:-
- no evidence of use of ‘RFC’ alone in a rugby football context;
- even if people are familiar with ‘RFC’ in relation to rugby, it doesn’t mean it is incapable of performing the essential distinguishing function; and
- without a preceding name, ‘RFC’ is unlikely to be considered the formal name of a rugby football club.
- Unusual to see ‘RFC’ alone without any reference to a specific club;
- ‘RFC’ does not reference the sport per se. RUGBY or RUGBY FOOTBALL would signify an allegiance to the sport; and
- it will essentially be seen as the ‘RFC’ brand.
Would the decision have been different if the arguments were based on ‘RFC’ being a reference to Rangers Football Club? Well, if even if ‘RFC’ is an abbreviation for Rangers Football Club, the name of a football club can still be distinctive as a trade mark, regardless of whether it also functions as a badge of allegiance for fans of the club.
Rugby football clubs need not worry, they should still be entitled to use the term ‘RFC’ alone or in an honest way to refer to their club as a rugby football club, or to goods or services connected with a rugby football club.
Can traders use ‘RFC’ on certain goods (eg. clothing, hats etc) to indicate their allegiance or support for Rangers Football Club? The UKIPO and Appointed Person would not comment, they said that it would have to be decided under trade mark infringement, not under opposition proceedings.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
