SUPERBOWL… And It’s Got Nothing To Do With Football

SUPERBOWL… And It’s Got Nothing To Do With Football

Do you watch the Super Bowl?? Or do you bowl at Superbowl?? How about tucking into piping hot congee at Superbowl?? Fact is, you can do all three in Singapore.? The first refers to the annual championship game of America’s National Football League (NFL).? The second to Singapore’s own enterprising business group and the third, well, is a restaurant at Boat Quay that frequently makes it to internet foodie lists for yummy congee.

The above illustrates how it can get slightly complicated when a trade mark is used in different contexts.? Things came to a head when Superbowl Golf School & Country Club Pte Ltd, a Singapore company in the Superbowl Group, sought to register “SUPERBOWL GOLF SCHOOL” as a trade mark. NFL took this move seriously enough to oppose the application.

At first glance, one may be forgiven in thinking that the extra words “GOLF SCHOOL” would mitigate against any likelihood of confusion between the local golf school, an offshoot of the bowling business, and the big time American football event.? Furthermore, the trade mark would be used in relation to golf lessons, a far cry from the rowdy, testosterone-charged team sport.

NFL thought otherwise and sought to persuade the Intellectual Property Office of Singapore (IPOS) that the public would confuse “SUPERBOWL GOLF SCHOOL” as an extension of its “SUPER BOWL” franchise.

IPOS had many issues to decide in this interesting case.? For one, the Principal Assistant Registrar found in NFL’s favour that “GOLF SCHOOL” is descriptive of the services claimed (providing golf lessons). Therefore, appending these words does not negate the possibility of an association between “SUPERBOWL” and “SUPER BOWL” in the mind of the public.

On the other hand, NFL failed to establish that there was any practice in the sporting arena for a market player to provide training in an unrelated sport (e.g. an American football outfit giving golf lessons).? As for diversification prospects, IPOS found it mere speculation that NFL may one day give golf lessons using the same mark “SUPER BOWL”.? It did not make commercial sense to dilute the brand identity of its mark.

In the final count, there was no real tangible danger of confusion to the public and “SUPERBOWL GOLF SCHOOL” was finally registered as a trade mark for golf lessons.

So ends one episode of a long running saga that is playing out across the globe.? NFL is remarkably zealous in taking legal action worldwide against potentially offending marks.? This decision in Singapore is by no means the last word.? Legal minds familiar with Singapore’s trade mark laws would wonder: Would the outcome differ if the “SUPERBOWL GOLF SCHOOL” application was filed later at a time when NFL could avail itself of the new law protecting well known marks?

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