A boutique law firm of exceptional quality and talent where clients' and lawyers' interests are aligned by collaboration and innovation
While we watch England battle against the world’s best in the Rugby World Cup, few of us may pay any real attention to their strip, nor that of their opponents. But International Rugby strips did not always look like this. Prior to litigation in the High Court between Nike, the Rugby Football Union and Cotton Traders Ltd in 2002, the strip was much simpler, and each nation merely played in a block-coloured jersey representing their national colour with the national emblem embroidered on the breast.
The legal action in the High Court in 2002 shone a spotlight on the rights to register national emblems as trade marks and protect international replica sports kit, whether for Rugby Union or any sport.
Background:
Since 1871 the members of the England Rugby team had worn a red rose on their rugby jerseys. Before 1920 the form of the rose was not standard. A newly capped player would simply be presented with a square of white fabric with a red rose embroidered on it. This fabric was then stitched onto a plain white playing jersey, usually supplied by the player himself.
Where the red rose came from is open to some debate. It may well have originated from the red rose of Lancashire, being adopted by Henry Tudor in 1485 after his victory deciding the War of the Roses at Bosworth Field. The Red Rose was also used by Elizabeth I as her emblem, and she presented the founder to Rugby School with a coat of arms prominently featuring the red rose (red also happens to be the school colour of Rugby School).
In any event, circa 1920, a standard design of “The English Rugby Rose” was introduced and worn by team members until 1998. In that year a new rose was designed, a stylised version of the previous rose, which has been used ever since.
Before 1992 members of the team wore, for home games, a jersey which was white with the English Rugby Rose on the left breast and no other marking on the front.
Cotton Traders Ltd:
In the meantime, in 1987, two former England and British Lions Captains, Fran Cotton and Steve Smith (initially including a third former captain, Tony Neary) founded Cotton Traders Ltd selling leisure clothing and accessories, but most notably, a replica of that international England Rugby jersey.
Before 1991, Cotton Traders Ltd produced and sold a version of that jersey, with the word England added underneath the rose. It produced the jersey as part of a range, also representing other Rugby Union playing countries together with their emblems, which were usually their own national emblems. Such jerseys included amongst others South Africa (a green and gold shirt bearing a traditional Springbok); New Zealand (a traditional black jersey bearing a silver fern), and the other UK home nations. Indeed, many other companies produced and sold similar garments.
In 1991, Cotton Traders Ltd became the official licensee of the Rugby Football Union (RFU), which it remained for some six years. During that period, the official strip for the England rugby team was redesigned, for the first time in its history. This departed from the traditional all-white design by incorporating red and blue bands around the arms. The reason for this was primarily so that the design of the jersey could be protected by intellectual property rights, in particular copyright, and so could be more easily commercialised. Cotton Traders produced the jerseys for the team, but also made versions for sale to the public. The only significant difference was, for perhaps obvious reasons, the robustness of the construction. It did not, during that period, sell the classic English rugby jersey.
The Trade Mark Position:
At the same time, the RFU tried to protect the red rose by trade mark registrations in the UK. In 1986 the RFU had failed to obtain registration of the red rose as a trade mark for clothing as the mark was not considered sufficiently distinctive to qualify for registration and in particular because it was a national symbol and should be free for all traders to use. However, in 1994, it did obtain registration of the red rose plus the words RFU ENGLAND for clothing for sports and leisurewear.
Finally in 1998, the RFU obtained registration for clothing of a Community Trade Mark (that is, a European Union trade mark) for the red rose alone. Although slightly different to the red rose on the playing jersey, it was the same emblem in principle.
In 1997 Cotton Trader’s licence was brought to an end by agreement. The RFU granted a new licence to Nike. Since then, the strip was again redesigned, as was the rose by Springetts (“the Springetts Rose) becoming a much more stylised version of the English Rugby Rose. Nike obtained the exclusive licence to produce the official strip, and to sell versions of it to the public. Cotton Traders, meanwhile, went back to producing and selling the classic English rugby jersey as they had previously done. And therein rose the dispute.
Litigation!
The result was that Nike and the RFU issued proceedings against Cotton Traders in the High Court for trade mark infringement and passing off. The issue in this action was whether it was entitled to continue selling. Bill was instructed by Cotton Traders to defend the company.
The RFU's Position:
The RFU claimed that it is entitled to prevent these sales. It relied first on provisions of the agreements by which Cotton Trader’s licence was granted and was terminated. Secondly, it relied on its rights as the proprietor of the Community trade mark (the "CTM rose"). Thirdly, it claimed that the use of the English Rugby Rose amounts to passing Cotton Trader’s goods off as being those of or associated with the RFU. To prove passing off, Nike had to show that such jerseys produced by Cotton Traders would be mistaken by customers as being licensed by the RFU). Nike joined in the claim in respect of trade mark rights, as exclusive licensee.
Cotton Trader's Position:
The case for the Defence, M’lud, was straightforward. It was argued that –
• The RFU had not previously objected.
• The registration of the CTM Rose (or any rose) was invalid as it was a national emblem of England.
• As traditional white rugby shirts bearing the English Rugby Rose had been produced by many companies over the years, the rose being the recognisable red rose of Lancashire, no confusion as to origin could occur and therefore the RFU could not prove passing off.
• Copyright infringement would not get the RFU home as they did not own the copyright, if any, in the English Rugby Rose and in any event such copyright, if it had ever existed, had expired.
• The only rose in which the RFU could claim any rights was the Springetts Rose, but Cotton Traders were not using that design.
The Judgment:
Mr Justice Lloyd gave judgment for Cotton Traders dismissing the proceedings brought by the RFU and Nike, and also allowing Cotton Traders’ counterclaim to revoke the registration of the CTM Rose as being a national emblem and therefore not qualifying for trade mark protection. The judge further ordered that the RFU and Nike pay the legal costs of Cotton Traders.
As a result, Cotton Traders were able to continue their production and sale of the traditional white England Rugby Jersey bearing the England Rugby Rose.
The Aftermath:
The aftermath of the case can only be described as the collapse of a row of dominoes. The judgment at the time was widely reported and had some serious ramifications on the world of International Rugby, namely on the ability of each nation’s jurisdictions to protect and commercialise their replica international kits.
As news spread throughout the Rugby playing world, many nations changed their national emblems to a more heavily stylised version so that they could be protected by the international laws of copyright under the Berne Convention, and by international trade mark registrations.
To date, many jurisdictions still play under redesigned stylised emblems.
And what did Bill learn from this? Never, ever, try and match a former England Prop and captain pint for pint, as he attempted at the post-judgment party!
To discuss any of the above further, please feel free to contact Bill Lister: billlister@bexleybeaumont.com | 07825 008252
