A company called Jules Rimet Cup Ltd (JRCL) applied to
register a trade mark for the phrase World Cup Willie and a cartoon
of a lion with foot outstretched, as if to kick a football.
The FA said that it would object to the application because it
had created a character for the World Cup it had hosted in 1966
called World Cup Willie which was a cartoon lion with foot
outstretched. JRCL took a High Court case to stop the FA from
objecting.
The Court agreed with the FA when it said that it still owned
the goodwill relating to World Cup Willie. Despite finding that
JRCL had not violated the FA’s copyright in the specific drawing,
it said that because the FA still owned the goodwill in the
character, JRCL’s activity was ‘passing off’.
Roger Wyand QC, sitting as a deputy High Court judge, said that
the date on which JRCL’s application for a trade mark was made was
“almost 40 years since the last activities which created the
goodwill. That is a long time for the goodwill to survive”.
The judge used as his evidence for finding that the goodwill
still existed not material produced by the FA, but material written
and produced by JRCL. Marketing documents and statements by JRCL
executives in the press seemed to link JRCL’s World Cup Willie
directly with the FA’s.
“When these documents were put to JRCL's witnesses they all
denied that these showed that the reason they chose the name World
Cup Willie and had a cartoon lion designed with that name was
because they thought that there was any residual goodwill in the
original World Cup Willie,” said Wyand. “I did not find their
explanations for the wording of these documents, for which they
were responsible, satisfactory.”
“I realise that these are marketing documents and should not be
taken too literally but describing an unknown brand as "some of the
most valuable sports rights in the UK" only makes sense if it is
actually a reference to the value of the original World Cup
Willie.”
“The documents show that JRCL and its licensee Granada clearly
believed that there was a residual value in World Cup Willie from
1966 that would enable them to establish a very strong brand
quickly. That residual value could only be a residual goodwill
which belonged to the FA,” he said.
The Court found that JRCL was ‘passing off’, and that its
attempts to register the trade marks were in bad faith, despite the
company’s claim that it had tried to do the right thing by seeking
legal advice.
“I conclude that, in spite of having sought the advice of Trade
Mark Attorneys, applying for the trade mark registrations, knowing
that World Cup Willie had a residual goodwill in the United
Kingdom, does amount to bad faith,” said Wyand.
