05 October 2005

Trade Marks: Alex Ferguson

The day after the announcement that Real Madrid had overtaken Manchester United as the world's biggest earning football club, the Registrar published the hearing officer's reasons for upholding the objection to an application by Sir Alex Ferguson for the registration of his name, ALEX FERGUSON, for
"Printed matter; posters; photographs; transfers; stickers; decalcomanias; stickers relating to football"
in class 16. An application had originally been made to register that sign in several other classes. Following objections from the Registry, the application was divided and the application in respect of everything except the above specification was allowed to proceed to publication.

The objection to the part that remained was under s.3 (1) (b) and (c) of the Trade Marks Act 1994. S.3 (1) (b) precludes registration of trade marks that are devoid of any distinctive character and s.3 (1) (c) of trade marks

".......which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services or other characteristics of goods or services,”

In rejecting the application, the Registry was following its established practice that:

"The name of a famous person or group is likely to be perceived as merely descriptive of the subject matter of posters, photographs, transfers and figurines. Names of famous persons or groups are therefore unlikely to be accepted by consumers as trade marks for these goods because they will usually be seen as mere descriptions of the subject matter of the product."
The interesting point about this case is the elegant not to say ingenious argument advanced by Fergie's agent, Alan Fiddes of Urquhart Dykes that as s.11 (2) (b) and (c) provide a defence for the use of marks that fall within the language of s.3 (1) (b) and (c) it must follow that at least some signs within that description must be capable of registration of trade marks.

Regrettably but perhaps unsurprisingly the learned hearing officer, Mr Hamilton, did not buy the argument. A poster of Alex Ferguson could only be described sensibly by the words ALEX FERGUSON. Thus, to register the sign as a mark was tantamount of giving Fergie a monopoly of anything bearing his image. The decision was clearly right but it is a shame that the argument was not analysed a little more.

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