Aston Villa Football Club fights Trademark Battle over use of its "Rampant Lion Emblem"

17 Aug 2018

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August 17,2018:

Aston Villa Football Club Limited, a professional football club based in Aston, Birmingham, England, opposed the mark Rampant Lion Emblem (on the right) claiming it is confusingly and deceptively similar to Aston Villa’s Club Badge (on the left), to which Japan Patent Office disapproved holding that relevant customers are not likely to consider both the trademarks similar.

The opposed mark which is of a rampant lion facing left, thrusting out its tongue, extending its tail vertically, was filed on February 7, 2017, by designated clothing, shoes, sportswear and sports shoes in class 25 and other two classes (12 and 35).

On July 28, 2017 [TM registration no. 5966695], JPO registered the trademark and published it for opposition on August 22, 2017.

The Article 4(1) (xi) of Trademark Law provides a provision to refrain from registering a new mark which is perceived similar or identical to any previously registered mark, which means that if the opposed mark is considered similar to the opponent’s mark and if their designated goods fall under the same class, it’s a violation of the above article.

Based on this, the football club claimed that the opposed mark is similar to Aston Villa’s previously registered mark, IR registration no. 1296488 effective in Japan.

According to the Opposition Board, despite the similarity of the rampant lion facing to the left, the opposed mark has some distinctive features based on its depiction of head, tongue, ear and tail as well as the length of the legs.

It said that due to the frequent use of rampant lion in heraldry, lion design cannot be used as one of the main factors in the assessment of mark similarity. It pointed out that the opponent mark can be seen as a combination of “AVFC” and the rampant lion. Considering the above, JPO sided with the opposed mark and decided it shall not be cancelled on the basis of Article 4(1) (xi).