Premier League appeal victory highlights principles of composite mark comparison

The Delhi High Court has rejected an appeal by textile manufacturer Premier Mills to cancel the registration of the Football Association Premier League’s (FAPL) composite trademark (Premier SPG and WVG Mills v Football Association Premier League, CA COMM IPD-TM 15/2023, 12418/2023, 22 January 2024).

Case background

The FAPL manages the Premier League – the highest level of the English football league system. It comprises 20 clubs and an unparalleled global fan base with over one billion social media followers. The FAPL filed a trademark application to register its logo in India in Class 25 for clothing, headgear and footwear (1489060). The logo featured an image of a crowned lion atop a football, along with the words “Premier League”. 

Upon advertisement, Premier Mills opposed this application on the grounds that the mark was phonetically, visually, structurally and deceptively similar to their mark PREMIER. The Delhi High Court disagreed and rejected the opposition on 2 February 2023; the FAPL’s mark was allowed to proceed to registration. Premier Mills appealed.

The dispute

Premier Mills argued that its house mark PREMIER and other formative marks had been registered since 1980 and had been in prior continuous and extensive use in India since 1991. By contrast, the FAPL’s application was filed on a ‘proposed to be used’ basis in 2006, and there was little evidence to support claims of immeasurable fame and reputation. Premier Mills also claimed that since the word ‘league’ was a common sports term, for the purposes of comparison, the dominant and essential feature of the rival marks was the word ‘premier’.

According to the FAPL, a search for ‘premier’ in Class 25 returned numerous registrations, including its own prior registration BARCLAYS PREMIER LEAGUE, INDIAN PREMIER LEAGUE by the Board of Control for Cricket in India, SRI LANKA PREMIER LEAGUE, PREMIER GOLF LEAGUE, PREMIER BADMINTON LEAGUE and PREMIER SPORTS.

Thus, ‘premier’ was a generic and commonly used word, particularly in conjunction with sporting leagues around the world and the registrar had correctly applied the ‘crowded field’ concept to hold that no exclusivity could be claimed over PREMIER.

Further, Premier Mills did not have a separate registration for PREMIER in Class 25 and had not submitted any evidence to demonstrate that the word acted as a source identifier for their products. Accordingly, the registrar was correct in viewing the rival marks as a whole and refraining from dissecting them into different components for the purpose of comparison. 

Comparison of the marks

The FAPL’s mark comprised the words ‘premier’ and ‘league’, along with a lion wearing a crown and standing over a football. The appellant’s mark had the word ‘premier’ written in a completely different font and style with a small flower on top of the letter ‘i’. The court held that there was no deceptive similarity between the two marks – the only commonality between them was the word ‘premier’, which was generic. Given that Premier Mills had no registration for PREMIER, for the purposes of comparison, the analysis would focus on the composite device marks.

Two principles of trademark law came into play: the rule of anti-dissection and the identification of the dominant mark. The anti-dissection rule is based upon a common-sense observation of customer behaviour – a typical shopper would not retain all individual details of a composite mark in their mind, but a general overall impression created by the mark as a whole. Therefore, conflicting composite marks are to be compared holistically rather than by breaking them up into components.

Further, a microscopic examination for differences is unnecessary. Rather, it should be kept in mind that the points of similarity are more important to the average buyer than minor points of difference. However, where there are both similarities and differences in the marks, these must be weighed against one another to see which predominates. It is not a violation of the anti-dissection rule to assess dominant and non-dominant components of both marks as a preliminary step to determine probable customer reactions to the conflicting composite marks as a whole. 

Key findings

The court stated that, on its own, PREMIER was an intrinsically weak trademark and that Premier Mills had not presented any evidence to show that the word had acquired a secondary meaning so as to be identified exclusively with its business. It also noted the appellant’s lack of opposition to the FAPL’s earlier mark BARCLAYS PREMIER LEAGUE, which had sat on the trademark register for nearly 10 years. The court held that “if at all distinctiveness is sought on the basis of the word ‘premier’, an opposition ought to have been filed at that stage itself”. 

Further, it was clear that the FAPL’s application in Class 25 was for the purpose of selling merchandise. This is standard industry practice for premium sports brands, and it was “nobody's case that it was planning to get into wholesale manufacture, distribution and export of general clothing goods, which was the business of the appellants”. 

The Delhi High Court found the rival marks to be dissimilar and the appeal was thus dismissed. The FAPL’s popularity aside, this decision has received a lot of attention on account of its detailed analysis of the principles that govern the comparison of composite trademarks. Rights holders should be mindful of these principles should they face similar circumstances.