Non-league football club told to stop using their name and initials
Mar 9, 2018
Author: Matthew Siddaway
Dulwich Hamlet Football Club currently sit at the top of English football’s seventh tier. However, in the latest development of a dispute with Meadow (the owners of its Champion Hill ground), the club has this week been told to stop using both its name and initials as a result of trade mark filings made on behalf of Greendale IP LLC (a subsidiary of Meadow).
Searches on the UK Intellectual Property Office (‘UK IPO’) website indicate that on 17 October 2017 Greendale’s legal representatives filed applications to register “Dulwich Hamlet Football Club”, “DHFC”, “The Hamlet” as UK trade marks in, amongst other things, class 41 for “sporting and cultural activities”.
These marks have now obtained registered status, prompting a cease and desist letter to be sent to the club asking that the marks no longer be used.
Unfortunately for the football club, it failed to oppose registration of the marks during the opposition period. For UK trade marks, this period runs for 2 months from the date of filing and can be extended by an additional month if necessary. Commencing opposition proceedings could have possibly prevented registration of the marks altogether. But what can be done now?
The mere fact that Greendale has obtained first registration of the marks is not definitive. Indeed, the football club was founded in 1893. It is therefore very likely to possess unregistered rights in the marks in relation to relevant goods and/or services. Such unregistered rights will pre-date Greendale’s registrations and could be relied upon to seek to invalidate the marks.
Further, it seems likely that there are credible arguments of bad faith here. If, for example, it can be proved that the marks were applied for dishonestly or as an abuse of the trade mark system, then this is an alternative ground of invalidity which could be relied upon.
relevant consideration is that, depending on the way in which Greendale’ claims have been termed in correspondence, the football club could themselves be afforded a claim for unjustified threats of trade mark infringement. Such a claim will be available to an aggrieved party in certain circumstances where infringement proceedings have been threatened without foundation.
Given the above considerations it seems unlikely that Greendale’s trade mark claims will be advanced any further. Nonetheless, the trade marks will remain on the UK IPO’s register until they are invalidated causing nuisance to a football club with a 125 year-old history.
Matthew has experience in a variety of trade mark, passing off, copyright and design right matters from advisory to enforcement of client's IP rights. He has also worked on disputes concerning domain names and has experience acting for leading brands in brand protection and anti-counterfeiting matters. Matthew has acted for clients in litigation in both the Intellectual Property Enterprise Court and the High Court. Read more.