Extreme Networks Limited v Extreme E Limited
[2024] EWCA Civ 1386
NBA Properties Inc v Pizza Texa Bulls Inc
15 November 2023
[2023] EWHC 3040 (Ch)
High Court
A company (NBA) appealed a decision that their trademark wasn't strong enough to block a similar one (Pizza Texas Bulls). The judge said the first decision was based on a mistake. Some parts of the case were rejected because NBA didn't prove enough, but other parts were sent back for another hearing to get a fair decision.
Key Facts
- •NBA Properties Inc. (Appellant) appealed the Registrar's decision refusing its application to invalidate Pizza Texas Bulls Inc.'s (Respondent) trademark registration.
- •The appeal focused on Article 6bis of the Paris Convention, concerning the Appellant's well-known device marks featuring a red bull's head.
- •The Respondent was unrepresented and potentially insolvent.
- •The Appellant's Article 6bis claim relied on two device marks (with a red bull's head), well-known in the UK due to use in the US, Canada, and Europe for basketball and related merchandise.
- •The Hearing Officer erroneously considered UK-registered trademarks instead of the Appellant's device marks when assessing the Article 6bis claim.
Legal Principles
Relative grounds for refusal of registration (likelihood of confusion, unfair advantage)
Trade Marks Act 1994, sections 5(2)(b), 5(3)
Meaning of 'earlier trademark', including marks protected under the Paris Convention
Trade Marks Act 1994, section 6(1)(c)
Protection of well-known trademarks under Article 6bis of the Paris Convention
Trade Marks Act 1994, section 56
Standard of review for appeals from the Hearing Officer
Axogen Corporation v Aviv Scientific Ltd [2022] EWHC 95 (Ch)
Outcomes
Grounds 1, 2, and 3 of the appeal were upheld.
The Hearing Officer made an error of law by considering the wrong trademarks and failing to apply the correct test under Article 6bis.
Ground 4 (section 5(2)(b) of the Act) was dismissed.
The evidence of the Device Marks' use for food and beverage sales was insufficient to establish a likelihood of confusion in the UK.
Ground 5 (section 5(3) of the Act) was remitted for rehearing by a different Hearing Officer.
This ground required a broader analysis of the Device Marks' use and reputation, which was not undertaken by the Hearing Officer. Further evidence needed consideration.
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