Red card, ref! Prior rights and bad faith as defences to trade mark claims
Dulwich Hamlet Football Club is fighting a battle to continue to play football at its Champion Hill ground, but it cannot have expected to face a fight to use its 125-year-old name.
Dulwich Hamlet Football Club has a long history dating back to its formation in 1893. The club currently plies its trade in the 7th tier of the English football pyramid in the Isthmian Premier League. Its impressively large and vocal crowds sing, “no-one knows us, we don’t care!”, but a remarkable trade mark dispute and the ensuing uproar on social media may have landed it on the map.
The club finds itself embroiled in a bitter dispute with Meadow Residential LLP, which owns its Champion Hill ground. Meadow has struggled with its plans to develop the land into flats and has evicted the club which now faces a battle to secure its future.
The dispute hit a new low when lawyers acting for a company associated with Meadow, wrote a letter asserting trade mark rights in the names DULWICH HAMLET FOOTBALL CLUB, THE HAMLET and DHFC. The letter insisted that the club should no longer use its 125-year-old name, its nickname or its initials or face “further action”. The applications for the trade marks in question were made in October 2017, a small matter of 124 years after the formation of the club. Cue consequent Twitter storm.
The seemingly very cynical move to register and assert trade mark rights, presumably to place additional pressure on the club in the context of the battle over redevelopment of the land, has proved to be a clear own goal for the landowner and the lawyers involved. In the face of heavy criticism, it is reported that Meadow has offered to transfer the trade marks to the club and the threat of claims seems to have dissipated.
Prior rights and bad faith
The club has used its name since 1893; presumably, it has also used its nickname, “The Hamlet”, and its initials, “DHFC”, for quite some time. Whilst it seems it has not opted to register those names as trade marks, it is very likely to have acquired unregistered rights in those names. Earlier, unregistered rights can provide a basis for challenging the registration of a later trade mark and a defence to trade mark claims.
Perhaps equally significantly, a trade mark registered in bad faith is liable to be declared invalid. Bad faith has moral overtones and encompasses not only dishonesty, but also dealings which fall short of objectively assessed standards of acceptable commercial behaviour. From the outside looking in, and without the benefit of the full facts, it seems difficult to discern good faith motives in this case.
Trade mark enforcement strategy
The social and traditional media reaction to these claims demonstrates the need for legitimate trade mark owners to weigh up carefully their options before asserting trade mark infringement.
Meadow and its lawyers have both faced the wrath not only of the club’s fans, but also the wider social media sphere. It is difficult to lay any blame at the door of lawyers fulfilling their client’s instructions, but angry fans have rushed to give the law firm 1 star Google reviews. Could it have been handled differently?
The traditional approach to trade mark enforcement entails variants of a lawyer’s letter which sets out the owner’s rights, addresses how those rights are being infringed and asks for undertakings to stop future infringement, amongst other things, whilst threatening action if the infringer does not comply.
Some brand owners are, very cleverly, getting more creative and seeing a more congenial approach to handling lower level infringement as a means to generate positive social media responses. Two recent examples include Netflix’s request to an unauthorised Stranger Things themed pop-up bar not to continue after the end of its run, littered with puns and references to the series, and Budweiser sending a town crier to read a medieval style scroll to a craft beer company riffing on Budweiser’s “Dilly Dilly” slogan. The use of trade mark enforcement as marketing opportunity stands in stark contrast to the seemingly clumsy approach of Meadow.
If the reports of the retraction of trade mark threats are correct, it looks like the score reads Dulwich Hamlet 1: Overzealous landlord 0. Extra time is, though, still being played to determine the winner of the more fundamental dispute over the future of the club’s ground.