Clash of Trade Marks: Bulls score win in Pizza Texas Bulls face-off

A recent showdown between our client NBA Properties Inc (National Basketball Association) and Pizza Texas Bulls Inc over a trade mark has taken an interesting turn, with NBAP prevailing in most of its grounds in an appeal to the UK High Court.

NBAP, owner of various trade marks featuring a bull's head used by the Chicago Bulls basketball team, found itself sparring with Pizza Texas Bulls, owner of a UK trade mark registered broadly for pizza, pizza delivery, and restaurant services under the figurative mark PIZZA TEXAS BULLS.

Initially, NBAP faced a stumbling block in its attempt to invalidate Pizza Texas Bulls' mark, in part due to a misunderstanding by the UK IPO Hearing Officer regarding the correct test for the protection of well-known marks in the UK.

Undeterred, we, along with our barrister, took NBAP's battle to the High Court by filing an appeal.

The appeal pivoted around five critical grounds, with NBAP prevailing in the majority. The successful grounds focused on the reputation of well-known marks. Central to our arguments was the provision enshrined in Section 56 of the UK Trade Marks Act (1994). We emphasised the provision that a mark could be recognised as well-known regardless of whether its owner conducts business or holds goodwill in the United Kingdom.

Establishing well-known status carries a high evidential burden, demanding robust proof across various factors, including the degree of recognition of the trade mark, the duration, extent, and geographical area of use of the mark and the extent of promotion of the mark. Furthermore, new Regulations (which came into force in the UK in 2022) amends Section 56 to grant holders of well-known trade marks the right to prohibit the use or registration of a conflicting mark for dissimilar goods or services. Acknowledging the complexities involved, the court granted our request to remit the case to the UK IPO for a review by a different Hearing Officer.

This success marks a significant milestone for NBAP, and the recent update to the protection in the UK for well-known brands represents a potential broadening of protection for trade mark owners. As the legal landscape evolves, it will be interesting to see whether there are more instances of brand-owners successfully relying on the provisions for the protection well-known marks in the UK and how the Courts and UK IPO will interpret it in disputes.

We celebrate NBAP's success and look forward to keeping you informed of any significant updates in the evolving legal landscape of Intellectual Property.

If you have any questions, please contact us at mail@stratagemipm.co.uk.