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.
After three decades of collaboration with the Federation Internationale de Football Association (“Fifa”), Electronic Arts Inc. (“EA”), the company that owns EA Sports, has told fans that it will no longer produce its world-famous football video game under the name “FIFA”. It now plans to release a game…
“Muzmatch” is a dating and marriage app that provides Muslims with the means to find a marriage partner online in a way that is compatible with Islamic values. Match Group recently brought proceedings against Muzmatch for trade mark infringement and passing off. It relied on a number of…
This case review from our trade mark expert, Maria-Elena Cacace, highlights the pitfall of failing to do a thorough trade mark clearance search and then being clobbered several years down the line by a major brand owner. On 16 February 2022, Hacon HHJ handed down judgment for a…