Everton FC scores on likelihood of confusion, but not on reputation

The UK Intellectual Property Office (UKIPO) has issued a decision in an opposition brought by The Everton Football Club Company Limited ("Everton") against a UK trade mark application filed by WLEV MOTOR, S.L. ("Wlev"). The case provides a useful reminder of both the strengths and limitations of short-form letter marks, particularly when relied upon outside their core sphere of recognition.

Wlev applied to register a stylised "EFC" mark covering a broad range of goods and services, including software, clothing, jewellery, retail services, entertainment services and hospitality services. The application was opposed by Everton under sections 5(2)(b) (likelihood of confusion), 5(3) (reputation) and 5(4)(a)  (passing off) of the Trade Marks Act 1994, relying on earlier rights featuring the letters "EFC".

Everton argued that the marks were sufficiently similar to give rise to a likelihood of confusion and that the application would also take unfair advantage of, or otherwise damage, the reputation and goodwill attached to its earlier rights.

Section 5(2)(b) – a partial win for Everton

At the heart of the case was whether consumers would view Wlev's mark as being sufficiently similar to Everton's "EFC" marks to give rise to confusion.

A key issue was whether consumers would interpret the applicant's mark as representing the letters "EFC". However, the applicant argued that the stylisation meant consumers might instead view the mark as a series of abstract design elements. The Hearing Officer disagreed, finding that a significant proportion of consumers would recognise the sign as a stylised representation of "EFC".

While Everton is unquestionably a well-known football club, the hearing officer drew an important distinction between reputation attached to the club itself and reputation attached specifically to the sign "EFC". This distinction proved decisive for several of Everton's claims.

In comparing the marks, the hearing officer reached the view that the letters "EFC" were the dominant element of both parties' marks. Although each mark contained figurative elements, those features were considered secondary to the shared lettering.

After assessing the goods and services, the hearing officer concluded that there was a likelihood of confusion for a substantial portion of the application. The opposition therefore succeeded in relation to many of the goods and services covered by the application.

Section 5(3) – no reputation for EFC

Perhaps the most interesting aspect of the decision concerns Everton's reputation claim. Everton relied on its long-established "EFC" mark by filing evidence relating to its history, attendance figures, merchandise and social media activity. The hearing officer accepted that Everton  is a well-known football club in the UK. However, the relevant question was whether the specific sign "EFC" enjoyed a reputation in its own right.

The hearing officer found that the evidence fell short of establishing a reputation in "EFC", the mark relied upon. In particular, there was insufficient evidence to demonstrate that consumers recognised "EFC" itself as a trade mark indicating commercial origin. References to "#EFC" on social media, use of the lettering within stadium signage and evidence relating to merchandise were not enough to establish the required reputation.

The section 5(3) ground therefore failed, as a party's overall popularity is not by itself sufficient evidence to enjoy reputation in a specific trade mark.

Section 5(4)(a) – Passing off claim fails

The passing off claim met a similar fate.

Although the hearing officer accepted that Everton has significant goodwill as a football club, the evidence did not establish that this goodwill subsisted in the sign "EFC". Instead, any goodwill was considered more likely to reside in signs such as "Everton" and "Everton Football Club".

As a result, the section 5(4)(a) ground also failed.

What does this mean for brand owners?

The decision demonstrates that relatively short acronym marks can enjoy a broad scope of protection against marks that may share those same letters if they are a dominant and distinctive element of the marks. Even if the marks are stylised differently, confusion can still arise where consumers recognise the same underlying letters.

The decision also highlights the importance of evidence when relying on reputation or passing off. Even where a business is well known, reputation and goodwill must be established in the specific sign relied upon. Evidence demonstrating the success of the wider business may not be enough if it does not show how consumers perceive the particular trade mark in question.

For football clubs and other brand owners that regularly rely on initials or abbreviations, the case is a useful reminder that evidence of consumer recognition should be gathered and preserved specifically for those abbreviated forms, rather than assuming such recognition will be inferred from fame in the underlying brand.