Fight for mascot - Jules Rimet loses the second leg

Last Wednesday the England football team conformed to current depressing expectations and failed in its critical match against the Russians. The next day, however, memories of glory were stirred when 1966 mascot World Cup Willie, mascot of England's World Cup-winning team, made a rare appearance in the High Court. The cause of his appearance was the litigation in Jules Rimet Cup Ltd v Football Association [2007] EWHC 2376, before Roger Wyand QC, sitting as a deputy judge of the Chancery Division. Sadly, this case has not yet been picked up by BAILII, but it was noted by the ever-useful LexisNexis Butterworths subscription-only service.

The casus belli in this case was the application of Jules Rimet Ltd (JRL) to register the words 'World Cup Willie', both on their own and with a lion device, as trade marks in respect of a range of goods. The Football Association (FA), becoming aware of these applications, indicated an intention to oppose, maintaining that it was the owner of the copyright and goodwill in the drawing of the original World Cup Willie mascot and in the goodwill in the name World Cup Willie. JRL sought declarations that the FA had no basis upon which it could oppose the applications and for relief against unlawful interference with its business. In response the FA said that JRL's device mark infringed its copyright, that JRL had passed itself off as the FA or as a business connected with it, and that the two trade mark applications should be refused both because use of the marks could be stopped by an earlier unregistered right and because they were made in bad faith.

In these proceedings Roger Wyand QC had to decide (i) who owned the copyright in the original World Cup Willie drawing; (ii) what was the effect of the Copyright Designs and Patents Act 1988, s.52 ("After the end of the period of 25 years from the end of the calendar year in which ... articles are first marketed, the work may be copied by making articles of any description, or doing anything for the purpose of making articles of any description, and anything may be done in relation to articles so made, without infringing copyright in the work") and (iii) whether the trade mark applications were made in bad faith.

Roger Wyand QC came down firmly in favour of the FA. In his considered opinion,

* on the evidence, the FA did indeed own the copyright in the original World Cup Willie drawing;

* Section 52 of the 1988 Act did not apply so as to prevent a copyright owner applying to prevent a third party applying to register a representation of an artistic copyright work as a trade mark;

* JRL was aware that the World Cup Willie design and name were widely known by a sector of the relevant public and, even though it sought the advice of trade mark attorneys, the making of the trade mark registrations, knowing that World Cup Willie had a residual goodwill in the UK, amounted to an application in bad faith.

The IPKat is not surprised at this outcome, given the iconic status of World Cup Willie. He is however surprised at how tenaciously the trade mark applicants in this case fought a battle that, he felt, was never very likely to succeed. Merpel asks, has anyone ever seen an official representation of World Cup Willie playing from right to left?

Readers with good memories will recall that the same two parties have already had a spot of High Court litigation over the same mark: see this weblog's earlier post on the first leg of this contest here

The Lion in Winter here