Albions United in Trade Mark Bid?

Brighton and Hove Albion FC have applied to protect ALBION / THE ALBION by way of a UK Trade Mark Application covering a wide range of merchandise as well as services such as charitable fundraising services, fan club services and the provision of food and drink at sporting venues.

This has been reported in the media as being a joint effort between Brighton, West Bromwich Albion and Burton Albion to protect ALBION, but it is notable that all of the goods / merchandise are restricted to being ‘connected to Brighton & Hove Albion Football Club’ so it would not provide any trade mark protection for West Brom and Burton in relation to those goods.

Image by jorono from Pixabay

The online Register shows that an, as yet unidentified, party has filed a ‘Notice of Threatened Opposition’ against this Application indicating that it has concerns about it and may decide to oppose. It remains to be seen on what basis this party might oppose Brighton’s Application, but it is certainly possible that the challenge could have been filed by another Albion football club.

As discussed in a previous article, Liverpool received a great deal of press attention for applying to protect the word LIVERPOOL. That Application was ultimately refused on the grounds that Liverpool is a geographically significant city and could not therefore be protected by the football club.

This case also brings to mind Inter Miami’s ongoing trade mark dispute in the US with Inter Milan in which the MLS (Major Soccer League) opposed Inter Milan’s US Trade Mark Application for INTER as it is blocking their own US Trade Mark Application for INTER MIAMI. That case has yet to be settled, but it demonstrates that disputes can arise when teams share nicknames or parts of their names, even if they are in different countries.

Could combined applications become a new policy with, for example, Manchester United, West Ham United, Newcastle United, Leeds United and others applying jointly to protect ‘UNITED’ in relation to football merchandise? Are Manchester City, Leicester City, Norwich City, Cardiff City and others going to file a UK Trade Mark Application for ‘CITY’? It would seem very unlikely given the low distinctiveness of these particular words, not to mention the rivalry between certain clubs, but it seems more feasible that Wolves, Bolton and Wycombe could similarly join forces to protect ‘WANDERERS’, or Blackburn, Bristol and Doncaster might apply for ‘ROVERS’.

These matters always generate much press attention due to the popularity of football and its place in the public consciousness. Any attempt to protect a club’s trade mark is often interpreted as commercial exploitation and while a registered trade mark would assist with licensing opportunities, it is important to note that a registered trade mark is also an important tool in the fight against counterfeit products.

Regardless of your team or sport, get in touch if you would like to discuss your trade mark or brand protection needs.