FA beats Jules Rimet Cup to win 1966 mascot.
The High Court has found that the Football Association (FA) could prevent applications by Jules Rimet Cup Ltd (JRCL) to register as trade marks WORLD CUP WILLIE (the mark), and a device mark combining the mark with a cartoon-type lion. It found that there were two grounds for refusal: first, under section 5(4) of the Trade Marks Act 1994 (TMA), because the mark and a similar cartoon-type lion had been used in merchandising under licence from the FA during the 1966 World Cup, so that JRCL's use of them would amount to passing off; and second, under section 3(6) of the TMA because JRCL knew that there was valuable residual goodwill in "World Cup Willie", so that its applications were made in bad faith. The court also rejected the FA's counterclaim for infringement of copyright in the drawing of the lion cartoon. The case explores some interesting issues in relation to copyright and trade mark law. It is notable that the court was prepared to find that the FA's goodwill arose through merchandising activities in 1966 (when the public may have been less aware of merchandising) and survived for a 40-year period. Case: Jules Rimet Cup Ltd. v The Football Association Ltd., 18 October 2007.
Section 10 of the Copyright Act 1956 (1956 Act) applied where a design corresponding to a copyright-protected artistic work was applied industrially by, or with the licence of, the copyright owner and the articles to which the design had been so applied were sold, let for hire, or offered for sale or hire. A design was "applied industrially" when more than 50 copies were made and they were manufactured in lengths or pieces and were not hand-made.
In such cases, after a 15-year period from the date on which such articles were first sold, let for hire or offered for sale or hire, it was not an infringement of the copyright in the work to do anything which would, if a corresponding design had been registered under the Registered Designs Act 1949 (RDA), have been within the scope of the copyright in the design (section 10(2) and (3), 1956 Act).
However, for the purposes of section 10(2) and (3), no account was taken "of any articles in respect of which, at the time of sale, letting for hire or offering for sale or hire, the design in question was excluded from registration under the [RDA]" by rules made under section 1(4) of the RDA (which concerned the exclusion of designs for articles of primarily literary or artistic character) (section 10(4), 1956 Act).
