Out-Law / Your Daily Need-To-Know
Goodwill in trade marks can last for 40 years even if the mark is rarely used in that time, the High Court has ruled. The Court ruled in favour of the Football Association (FA) which was defending its ownership of a mascot from the 1966 World Cup.
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.
