In a case argued by Remfry & Sagar, the Delhi High Court has upheld the registration of the ‘Premier League’ trademark saying that the appellants had no monopoly rights over ‘Premier’ per se.

The Football Association Premier League (‘League’) manages the Premier League – the highest level of the English football league system comprising 20 clubs with an unparalleled global fan base. The League filed a trademark application in India in Class 25 (No. 1489060 for clothing, headgear, footwear) to register its logo featuring a device along with the words ‘PREMIER LEAGUE’.

Upon advertisement, this application was opposed by Premier SPG and WVG Mills Pvt. Ltd. (appellants) on the ground that the mark was phonetically, visually, structurally and deceptively similar to their mark ‘PREMIER’. The Registrar disagreed, rejected the opposition on February 2, 2023, and the League’s mark was allowed to proceed to registration. This occasioned an appeal to the Delhi High Court by the appellants – Premier SPG and WVG Mills Pvt. Ltd. v. Football Association Premier League Ltd. & Anr. C.A.(COMM.IPD-TM) 15/2023 & I.A. 12418/2023.

According to the court, prima facie there was no deceptive similarity between the two marks – the only commonality between them was the word ‘PREMIER’, which was generic in nature. The League’s mark had the word ‘PREMIER’ suffixed by the word ‘LEAGUE’ combined with the device of a lion wearing a crown standing over a football. The appellants’ mark had the word ‘PREMIER’ written in a completely different font and style with a small flower device on top of the word. Given that the appellants had no registration for the word ‘PREMIER’ per se, and could not prove secondary meaning acquired through use, for the purposes of comparison, the analysis would focus on the composite device marks.

The rival marks were found to be dissimilar and the appeal was dismissed. You can read the order here: https://lnkd.in/gPCdJzhu