WORLD CUP WILLY - OR WON'T HE?; GELBE SEITEN AGAIN

World Cup Willy ... or won't he?

Just when you thought the World Cup was all over, along comes Jules Rimet Cup Ltd v Football Association Ltd, a decision last Friday from Mr Justice Mann of the High Court for England and Wales, Chancery Division. The dispute is not yet on BAILII but has been noted by Lawtel, the subscription service operated by Sweet & Maxwell.

Right: World Cup Willie. Note the politically incorrect use of the Union Flag motif to represent England

This was the conjoined hearing of (i) an application by Jules Rimet against the FA to stay proceedings in the High Court and (ii) an application by the FA to stay proceedings in the Trade Marks Registry. To understand this dispute, it is necessary to understand that World Cup Willy was the mascot of the 1966 World Cup. The IP rights rights in World Cup Willy belonged to the FA.

Now, what was all the fuss about? Jules Rimet, having applied to register as a trade mark the words WORLD CUP WILLY together with a sign representing its own version of a prancing cartoon lion, then licensed its use by a television broadcasting company. Jules Rimet now complained that thereafter the FA, which had lodged an opposition to Jules Rimet's application, had induced the broadcasting company to breach the licensing agreement by threatening to sue it.


Left: the Jules Rimet trophy

In the proceedings before Mann J, Jules Rimet sought a declaration that the FA's opposition was unsustainable, plus damages for an allegedly unlawful interference with its business. According to Jules Rimet, it had not copied the FA’s mark and any goodwill claimed by the FA in WORLD CUP WILLY had been abandoned. The FA then commenced passing off proceedings in the High Court, whereupon Jules Rimet applied to stay those proceedings on the basis that the Trade Marks Registry was the appropriate forum for determination of all the proceedings. The FA then applied to stay the proceedings before the Trade Marks Registry, saying that the High Court was the appropriate forum to try the proceedings between the parties. Jules Rimet disagreed, arguing that the Trade Marks Registry was the more appropriate forum to try the proceedings as the cost of litigation for the parties would be less and the litigation would be faster.

Mann J held that, having regard to the fairness to the parties and all the relevant circumstances, the High Court was the appropriate forum for the determination of the issues between the parties.

* The dispute between the parties related to copyright and passing off. In the circumstances those issues involved a full action: this was not the sort or level of dispute suitable for the Trade Marks Registry but was more suitable for the High Court.

* The reason why the costs incurred before the Trade Marks Registry would be less than the cost of litigating High Court was that the dispute would be resolved less satisfactorily in that forum.

The IPKat doesn't want to argue with Lawtel, but half of him was around in 1966 and seems to remember that it was "World Cup Willie" rather than "Willy" ... He also wonders if the Trade Marks Registry won't be feeling a little miffed: their dispute-resolution skills have grown greatly in the past decade and at least they're familiar with IP, which is more than can be said for some of the judiciary who get to hear IP matters at High Court level. Merpel adds, anyone making jokes about "it will never stand up in court" will be tied to a chair and forced to watch an eternal looped tape of the Ukraine v Switzerland match from the World Cup 2006.

The real Jules Rimet here
How Pickles found the Jules Rimet trophy here


More on GELBE SEITEN

A few days ago the IPKat posted a short note on the cancellation of Deutsche Telekom's GELBE SEITEN trade mark.

The IPKat has since learned from his learned friend Christian Rohnke (White & Case, Hamburg) that this ruling is being appealed to the Federal Patent Court and may reach the Federal Supreme Court. Many thanks, Christian, for letting us know.