UK: ‘World Cup Willie’ Saved For Nation

Last Updated: 21 July 2008
Article by Adrian Heath-Saunders

Back in the 1960's, before many readers of this bulletin were born, a mascot was created for the 1966 World Cup, which of course was hosted in and won by England. The mascot, 'World Cup Willie', was a cartoon type lion dressed in a Union Jack shirt and white trousers.

Many years later, in 2005, Jules Rimet Cup Ltd applied to register as a trade mark the words WORLD CUP WILLIE on their own and a device mark based on the World Cup Willie mascot together with those words.

When the Football Association (FA) got to hear of the applications they indicated to Jules Rimet Cup Ltd that they would oppose those applications if they were not withdrawn. They also informed a third party who had entered into a licence with Jules Rimet Cup that they had grounds to oppose the trade marks which were the subject of the licence and as a result that third party terminated its agreement with Jules Rimet Cup. This led Jules Rimet Cup to launch proceedings against the FA seeking a declaration that the FA had no grounds to oppose its trade mark applications. The FA launched its own attack in response, arguing that since the FA was the owner of the copyright in the original drawings of the World Cup Willie mascot, Jules Rimet Cup's use of its device mark amounted to an infringement of the FA's copyright. It also argued that by using the World Cup Willie name and its device Jules Rimet Cup were guilty of passing off.

Copyright

The judge's decision on the copyright issue was, like any match, one of two halves. He decided that the FA did own copyright in the drawing of the original mascot and that if a third party were to apply to register a device which copied that drawing doing so would infringe copyright. However, in a blow to the FA he also held that although the designer of the logo used by Jules Rimet Cup had based his original drawings on the original mascot, the final version actually used by Jules Rimet Cup did not reproduce a substantial part of the orginal drawing and so did not infringe.

Passing Off

On the question of 'passing off' the judge agreed with the FA that the goodwill created by merchandising activities leading up to the 1966 World Cup did belong to the FA, although the FA's position would have been far stronger if they had been able to point to written agreements with merchandisers acknowledging this ownership. He also agreed that, contrary to Jules Rimet Cup's contention, this goodwill had not been abandoned – it had merely been put on the shelf pending potential use again in connection with a future World Cup staged in England. On the key question of whether the goodwill has survived to such an extent that the FA could now launch an application for passing off, in spite of the fact that 40 years had passed since any use of the World Cup Willie marks, the judge agreed that there was residual goodwill in the name and character World Cup Willie that would have enabled the FA to succeed in a passing off claim. This therefore would be grounds for the FA to oppose the applications made by Jules Rimet Cup.

Bad Faith

The final grounds that the FA argued that it could rely on in order to oppose the trade mark applications was that of bad faith. What the court has to decide in such a case is whether the knowledge of the applicant at the time of making his application was such that his decision to apply for registration would be regarded as being in bad faith by persons adopting proper standards. The judge found that the applicants made their application knowing that there was residual goodwill in World Cup Willie. Having so found the next question to consider was whether they were acting dishonestly as judged by the ordinary standards of honest people. Jules Rimet Cup argued that the fact that they had sought legal advice should be a complete answer to any allegation of bad faith, however, they did not disclose the advice given or the information provided to their advisers. In the absence of so doing the judge held that in spite of having sought advice, applying for the trade mark registrations in the knowledge of the residual goodwill did amount to bad faith. Again this would give the FA grounds for opposing the applications made by Jules Rimet Cup.

At the time of writing it appears that the two applications are indeed the subject of opposition proceedings and it is therefore likely that, unless a settlement is reached, the marks will not proceed to registration.

The case highlights a number of important issues for sports bodies who may create mascots and other logos in connection with sporting events: ensure that any designers engaged to produce artwork assign all rights to you at the outset (the FA had to seek an order assigning rights to it); register your logos etc as trade marks and renew those marks if there is any scope for future use (this may avoid the need to prove the existence of residual goodwill, although a mark can be revoked for non-use if no genuine use is made for a period of 5 years); ensure that in any licensing of your marks and logos it is made clear that any goodwill generated is to be held for your benefit.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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