The Federation Internationale De Football Association - ("applicant") applied to register the word "FIFA" in relation to a wide range of products in 22 classes. The Registrar objected that the word "FIFA" was not a trade mark as define in the Trade Mark Ordinance ("TMO") and that the applicant did not intend to use the word "FIFA" by itself.
The Registrar noted that the applicant did not engage in the manufacture of the goods or the provision of the services claimed. Further, the Registrar noted that the "FIFA" mark applied for was intended to be used by sponsors and licensees on their own goods and services. The word "FIFA" would be added to the packaging of products bearing an existing mark. For example the "Coca Cola" mark would appear on the can with the word "FIFA" added. The Registrar noted that consumers would not think that "FIFA" was a trade mark for the beverage but that the Coca Cola company is a sponsor of the "FIFA" football event.
In considering whether to allow the "FIFA" applications, the Registrar noted that since a trade mark registration grants a perpetual monopoly in a mark, he must balance the monopolistic rights with the interests of the general public. This balance is calibrated by restricting what may amount to a registrable trade mark and by restricting whom may be registered as a proprietor.
The Registrar noted that section 13(1) of the TMO provided that "[a]ny person claiming to be entitled to be registered as proprietor of a trade mark used or proposed to be used by him who is desirous of registering it must apply in writing to the Registrar in the prescribed manner...".
Rule 10 of the TMO provides that "...the Registrar may refuse to accept the application unless he is satisfied that the specification is justified by the use of the mark which the applicant has made, or intends to make if and when it is registered". There are two exceptions to the rule. The pertinent exception in this case is that an application for the registration of a trade mark shall not be refused on the ground only that it appears that the applicant does not use or propose to use the trade mark if the application is accompanied by an application for the registration of a person as a registered user of the trade mark and the Registrar is satisfied that the proprietor intends it to be used by that person in relation to those products. The Registrar must also be satisfied that that person will be registered as a registered user thereof immediately after the registration of the trade mark. The possible exception was not available by the facts. That is, there was no simultaneous application to record any users.
The Registrar noted that in the PUSSY GALORE1 case the applicant applied to register several trade marks for a wide variety of goods. It was the applicant's intention to exploit the trade marks by licensing them on the basis of registered user agreements although they had made no application to register any third party as a registered user at the time of the application. The application for registration was refused on the basis that to qualify as an applicant "the proprietor of the mark must either possess the intention to use the mark himself at the time of the application or have applied under the conditions" for registering a user.
The Registrar also acknowledged the strength of the United Kingdom decision in the HOLLY HOBBIE case2 in which the applicant applied to register a drawing of a girl in relation to 12 classes of goods. In the HOLLY HOBBIE case there were contemporaneous user agreements. The Registrar in that case refused to approve the user agreements on the basis that they would tend to facilitate trafficking in a trade mark. The UK High Court, the Court of Appeal and ultimately the House of Lords unanimously rejected the user agreements.
The test set out by Whitford J in the High Court was "Will the grant of these applications for registered usership facilitate trafficking in the trade mark HOLLY HOBBIE? If it will, the Registrar must refuse registration...if the registered user applications are not going to succeed, the terms of section [18 (1)(b)] cannot be met and the applications for trade mark registrations must fail...". The Hong Kong Registrar noted that these statements were unequivocal. In essence, an applicant who did not personally intend to use the mark on the specified goods could not be the applicant unless there was a registered user recorded or if the mark is assigned to a body corporate which is about to incorporated within a few months to use the mark in relation to the goods or services claimed. It was noted that there was criticism that the ordinance did not reflect commercial reality in its prohibition to the registration of trade marks intended to be licensed to others to use. Nonetheless, this was a matter for the legislators and not for statutory construction.
The "FIFA" applications were refused.
Decision of the Registrar of Trade Marks dated 27 September 2002 (unreported)
1. [1967] RPC 265
2. [1984] RPC 329
