Football Club trade marks, a cautionary tale from Dulwich Hamlet FC
Readers might have seen the disheartening news for Dulwich Hamlet FC (DHFC) about their possible exclusion from their ground at Champion Hill.
But there’s a further problem for DHFC. Beyond the right to use that physical space, the stadium owners are also seeking to exclude Dulwich from using their intellectual property.
It’s certainly lit a fire under the DHFC twitter feed.
Here’s the background:
- The stadium owners (the property company that allow use of the Champion Hill ground) have, through a subsidiary company, registered several names and trade marks of Dulwich Hamlet back in October 2017.
- A legal letter from the company’s lawyers to DHFC asserts ownership of the marks and warns against their use by DHFC.
- According to the letter, if DHFC use any of the words “Dulwich Hamlet Football Club”, “The Hamlet” or “DHFC” on any printed literature and any online activity, “further action will be taken”.
To lose the right to use your own name is potentially a huge problem for any business, let alone a sports team, whose name will be of huge importance to supporters. However, it’s unlikely that it’s all over for DHFC, and not just because of the tenacity of their social media followers.
It seems likely that the company’s lawyers didn’t consult their IP colleagues. If they had, they would have been warned that the registrations were almost certainly bad-faith registrations and that subsequently the letter was an unjustified threat. Rights in the names which had been registered clearly belong to DHFC, and the attempt to register them was clearly in bad faith, particularly as they seem to have been made purely for the purpose of applying pressure on DHFC. As such, they are extremely unlikely to meet the standard of acceptable commercial behaviour to allow for valid registration.
On top of that is the threat of legal action. An unjustified threat doesn’t just amount to bullying, there can be serious legal sanctions, refreshed recently through the Intellectual Property (Unjustified Threats) Act 2017.
How unjustified is the threat in this case? Without all the details it’s difficult to say, but it seems likely that the bad-faith basis of the registration, as well as the Club’s prior continuous use of its marks before the registration, would prevent any action for infringement. Not a great footing for the property company to work from, then.
Nevertheless, the whole event shines a light on the importance of making sure your trade marks are properly registered before someone else does it for you. In this case, DHFC could have prevented the company’s actions by registering, or, failing that, monitoring its marks and objecting the company’s attempted registration. Much better to do this than hoping a twitter storm will bring results – though that option could yet be effective.