Jules Rimet Cup Ltd v The Football Association Ltd
| Jurisdiction | England & Wales |
| Judge | MR. JUSTICE MANN |
| Judgment Date | 18 October 2007 |
| Neutral Citation | [2007] EWHC 2376 (Ch),[2006] EWHC 2415 (Ch) |
| Docket Number | Case No: HC05C02965,No. HC05CO2965 |
| Court | Chancery Division |
| Date | 18 October 2007 |
[2006] EWHC 2415 (Ch)
Mr. Justice Mann
No. HC05CO2965
Mr. H. Cuddigan (instructed by Briffa) appeared on behalf of the Claimant.
Miss L. Lane (instructed by Addleshaw Goddard) appeared on behalf of the Defendant.
(As approved by the Judge)
There are two applications before me today. They are competing applications for the stays of, on the one hand, these High Court proceedings, and on the other what I will call matching Trade Mark Registry proceedings arising out of a registration of trade marks by the claimant, Jules Rimet Cup Ltd. (“Jules Rimet”). Jules Rimet is a company which describes its business as development of brands and licensing. In fact, as I understand it, the marks in question in this action are its only attempt at business in that respect. The defendant is the Football Association Ltd. which is the Football Association, the governing body of football in this jurisdiction.
In the applications before me Mr. Cuddigan appeared for the claimant and Miss Lane appeared for the defendant.
The trade mark applications in question in this case were made by virtue of two applications: one dated 25 th February 2005, and the other dated 23 rd May 2005. The marks were respectively a word and a sign, the word mark being “World Cup Willy”, and the sign being a dancing/kicking cartoon lion.
In 1966 World Cup Willy appeared as a mascot and/or as a sign but at that time the mark and such rights as there are associated with it were (and so far as they still exist still are) vested in the defendant. World Cup Willy, in the claimant's version, put in an appearance last year with a view to the claimants being able to exploit the idea for the purposes of this year's World Cup. To that extent, timing was crucial. The claimants having identified that as a marketing opportunity, they sought to register their marks. If the registration had been unopposed and allowed an exploitation, such exploitation would have occurred before the World Cup and would, no doubt the claimants would say, have maximised exploitation. Who knows, it might even have led to greater success for the English team in the World Cup if they had had the old mascot. However, that was not to be. The claimants entered into various arrangements with inter alia Granada, and indeed entered into a contract licensing the rights in May 2005 but got no further.
As I have indicated, the Football Association have their own World Cup Willy marks. They also claim goodwill in the name, and they claim copyright over a competing design. By letters of 12 th May and 17 th June they informed the claimant of their intention to oppose the claimant's marks if the application to register them was not withdrawn. The claimant did not withdraw its applications, and the claimant alleges that in the summer of 2005 the defendants contacted Granada and induced Granada to cancel the agreement reached between Granada and the claimant, and to break that contract, by threatening to sue Granada. As a result, Granada cancelled or purported to cancel the agreements in September 2005.
Up to that stage there had been no formal challenge to the claimant's mark. The claimant wished to take the matter up. However, the defendant had not yet lodged any formal opposition in the Trade Mark Registry and did not take any steps, by way of proceedings or otherwise, in order to resolve the dispute which was inevitably going to have to be determined as between the claimant and the defendant.
Faced with that position, and, as Mr. Cuddigan tells me, desiring to put in train steps to have the position resolved, the claimant commenced the present action. The present action sets out the basis on which the Football Association had sought to challenge the registration of the marks, and seeks a declaration that those challenges cannot be maintained. It also claims damages for wrongful interference with its business and for wrongfully inducing breach of contract, and claims an injunction in relation to that. The action was commenced on 20 th October 2005.
On the last possible day on which it could be done in the Trade Mark Registry (that is to say, 25th November 2005) the Football Association gave notice of opposition. The basis of opposition was ss.3(6), 5(2)(b), 5(4)(a) and 5(4)(b) Trade Marks Act 1994. Distilling those matters and distilling the complaints as set out in correspondence, they were in essence that the use of the claimant's mark could amount to passing off the claimant's business as the Football Association's, infringement of copyright, and (so far as it is now still live) a similarity to the Football Association's own mark.
The claimant's riposte to those claims (which are actually largely set out in its particulars of claim in the present action) are that there was no copying; that the Football Association's goodwill does not exist, or if it did ever exist it has been abandoned; and that the relevant marks are not similar. There is also a complex technical argument based on various statutory provisions including various design right Acts, and rules of various vintages. I was not treated to an analysis of those provisions and I do not need to detail them here.
A Defence was filed and served on or about 16 th December 2005. In para.31 of that document it was pleaded that this court does not have jurisdiction to grant the declarations sought in the particulars of claim where applications were pending in the Trade Mark Registry. It adds a counterclaim which repeats the copyright and passing off claims, and seeks injunctive relief in respect of the threatened conduct of the claimant. A Reply was served on 6 th February 2006.
The action thus constituted has all the ingredients of two actions. First of all, a passing off and copyright action in reverse, with the alleged infringer and passer off being in fact the claimant. Secondly, the common law wrongful interference claims. There the action largely rested. I am told that there was a stay for a month while there were attempts to settle it. This was in February and March 2006. Those attempts were unsuccessful. The action was then not pursued further at that time.
However, in May and June 2006 there was a flurry of activity. On 30 th May the Football Association sought a stay of the trade mark proceedings pending the outcome of this action. That act can be contrasted with the pleading in para.31 of its defence which asserted that this court did not have jurisdiction to determine matters while they were the subject of the Trade Mark Registry proceedings. The Trade Mark Registry has given a preliminary non-binding and non-determinative indication that a stay of its proceedings should not be granted, but nothing turns on that.
On 7 th July the Football Association issued an application in this action for security for costs. On the same date, the claimants sought a stay of these proceedings on the footing that the issues in these proceedings would in fact more appropriately be decided in the Trade Mark Registry. Then, to complete the hands of the parties, the Football Association on 21 st July 2006 applied in this court for an order that the Trade Mark Registry proceedings be stayed, or that the claimant be enjoined from pursuing its applications for its marks on the footing that the High Court was indeed the appropriate forum for determining the copyright and bad faith issues which are the effect of the passing off issues that arise. Thus have the positions of the parties been reversed.
In that manner, the questions of stay come before me. The claimant is seeking a stay of proceedings that it started itself. The defendant is seeking to promote proceedings which they originally pleaded would not and could not determine the central questions while the Trade Mark Registry proceedings were pending. One could be forgiven for thinking that something tactical is going on. If one were to think that, one would find that impression very much strengthened by a late change of position on the part of the claimant to which I will come in due course.
There were originally disputes as to the extent to which determinations of one or other of the tribunals in this matter (that is to say, this court and the Trade Mark Registry) on the trade mark related issues would bind the other. But by virtue of a combination of an appreciation of the operation of the law of estoppel and undertakings or indications given by each party as to their accepting that they would be bound by the decisions of each tribunal, those points no longer arise.
The common law claims of the claimant for wrongful interference can only be litigated in this court, but putting those on one side, it is now accepted that both the High Court and the Trade Mark Registry could determine the copyright and passing off issues that arise, and, if necessary, the similar mark issues (though I think that issue may have subsided) in a way which would determine the result for the purposes of the other tribunal. The question before me became which was the appropriate forum for deciding the IP disputes: the High Court or the Trade Mark Registry?
At this point, and in order to determine that question, the debate before me centred around the following points.
Cost. The claimant said Trade Mark Registry proceedings would be very much cheaper. In that forum the proceedings would be dealt with less expensively on each side, not only because that is how it is done in the Trade Mark Registry, but also because each side has...
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