High Court Rules in NBA Properties Inc v Pizza Texa Bulls Inc Case: Key Issue of Well-Known Marks and International Reputation Evaluated

Citation: [2023] EWHC 3040 (Ch)
Judgment on

Introduction

In the case of NBA Properties Inc v Pizza Texa Bulls Inc, the High Court of Justice, Business and Property Courts of England and Wales considered an appeal relating to the invalidation of a trade mark registration. The dispute centered on the use of a red bull’s head in connection with Pizza Texa Bulls Inc’s branding for pizza-related products and services, which NBA Properties Inc asserted infringed upon their well-known device marks associated with the Chicago Bulls basketball team. This article provides an analysis of the decision, the legal principles applied, and the implications of the ruling.

Key Facts

NBA Properties Inc (Appellant) sought to invalidate Pizza Texa Bulls Inc’s (Respondent) trade mark registration on the basis that it conflicted with their previously established marks. The trade mark in question featured a red bull’s head, which the Appellant argued was similar to their own device marks related to the Chicago Bulls. The Hearing Officer initially refused the invalidation request, prompting the Appellant to appeal the decision on several grounds, arguing that the Hearing Officer made legal errors in applying the wrong marks and failing to consider the correct scope of goods and services associated with their well-known marks.

The legal principles underpinning the appeal stem from various sections of the Trade Marks Act 1994 and the Paris Convention. These include:

  • Section 5(2)(b), which concerns the similarity of trade marks and likelihood of public confusion.
  • Section 5(3), which involves trade marks with a reputation in the UK and protection against usage that takes advantage of or is detrimental to their distinctive character or repute.
  • Section 6(1)(c), which defines an “earlier trade mark” as including well-known trade marks protected under the Paris Convention.
  • Section 56, which articulates protection for well-known trade marks under the Paris Convention and their right to restraint by injunction.

Additionally, Article 6bis of the Paris Convention was invoked, pertinently relating to the protection of well-known marks.

A crucial aspect of the case was the recognition that NBA Properties Inc’s device marks, while being a U.S. entity, held international reputation and were, therefore, well-known in the UK. The Hearing Officer’s error lay in not recognising that the relevant comparison for Article 6bis should have been with these device marks, not the other earlier UK-registered marks mentioned.

Outcomes

The appeal identified several grounds where the Hearing Officer had erred, including:

  • Ground 1: Failing to consider the correct marks for Article 6bis.
  • Ground 2: Overlooking the goods and services linked with the device marks.
  • Ground 3: Relying on UK-focused findings for the reputation, rather than considering the Device Marks’ use abroad.
  • Ground 4: The error carried into the likelihood of confusion analysis under Section 5(2)(b).
  • Ground 5: Relevance of Section 5(3) necessitates considering the complete scope of goods and services linked with the device marks.

The court found for the Appellant on the first three grounds, correcting the Hearing Officer’s focus from the UK-registered marks to the Device Marks. However, the court dismissed Ground 4, noting insufficient evidence of confusion between the Device Marks and the contested services related to pizza.

For Ground 5, the High Court remitted the issue back to the Registrar for a fresh Section 5(3) determination, affording the opportunity for both the Appellant and potentially the Respondent to argue the well-known nature of the Device Marks for the broader scope of goods and services abroad, and its impact in the UK.

Conclusion

The case highlights the intricacies involved when evaluating the validity of trade marks in relation to well-known international marks. The decision reaffirms the protection afforded to well-known trade marks under the Trade Marks Act 1994 and the Paris Convention, with particular attention to the correct application of the law. The findings of the appellate court underscore the significant role played by the scope of goods and services linked with a mark in determining the likelihood of public confusion and the potential for a trade mark to take unfair advantage of or be detrimental to the repute of a well-known mark. The remittal for the Section 5(3) re-evaluation underscores the comprehensive nature required in these analyses, particularly when international reputation is considered in the UK context.