As has been reported by numerous media outlets, Dulwich Hamlet Football Club (current leaders of the Isthmian League Premier Division) recently received a cease and desist letter from lawyers representing Greendales IP LLC, a company related to Meadow Residential LLP, the entity which owns the ground at which Dulwich Hamlet play. The letter notified the club that Greendales had secured UK trade mark registrations for DULWICH HAMLET FOOTBALL CLUB, The Hamlet, and DHFC and demanded that the club stop using those marks. The club swiftly posted a copy of the letter on Twitter.
The issuance of the cease and desist letter was one strand of a series of disputes between the football club and Meadow but, amid a barrage of criticism on social media (including from well-known names in the footballing world and Members of Parliament), it seems that Greendales/Meadow may have retracted their trade mark demands. At the time of writing, the retraction has not been widely reported.
The matter has raised questions regarding how Dulwich Hamlet might defend itself (if such action turns out to be required), and what action football clubs, sports teams, and indeed any business can take in order to prevent themselves becoming embroiled in such trade mark disputes.
Greendales’ decision to register the trade marks DULWICH HAMLET FOOTBALL CLUB, The Hamlet, and DHFC and then attempt to enforce those registrations against Dulwich Hamlet Football Club was perhaps a little short-sighted, given that a UK trade mark registration can be cancelled if it is found to have been filed in bad faith. The club could apply to cancel Greendales’ registrations on this basis, if it could show that the filing of the applications was action which “[fell] short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular area being examined” [Gromax Plasticulture Ltd v Don & Low Nonwovens Ltd]. The UK trade mark application form specifically includes a declaration that the “trade mark is being used by the applicant…in relation to the goods or services shown, or there is a bona fide intention that it will be used in this way”. The making of this declaration is effectively an assertion by the applicant that it is the rightful owner of the trade mark and is entitled to use it. However, in the present case, Greendales is a company related to the owner of the football ground rather than to the football club itself. Surely, the football club is the rightful owner of its own name.
Dulwich Hamlet Football Club has been using its name since 1893, so will have acquired unregistered (common law) rights in it, as well as in the longstanding nickname ‘The Hamlet’ and the acronym DHFC. Such rights could form an additional basis for cancelling Greendales’ trade mark registrations. Significantly, unregistered rights are also identified in the UK Trade Marks Act as a defence to infringement – “A registered trade mark is not infringed by the use in the course of trade in a particular locality of an earlier right which applies only in that locality” [Section 11(3) TMA].
So it would seem that Dulwich Hamlet Football Club may have recourse to a number of defences and means of counter-attack, but significant legal costs would be inevitable should such action be required. The takeaway message for other football clubs and businesses in general must be that prevention is better than cure. Had Dulwich Hamlet Football Club itself obtained registered protection for its name, it would have easily been able to prevent Greendales or anyone else from registering it. The UK trade mark application process is quick and, in the majority of cases, straightforward. There are some fees involved but they are a small price to pay for peace of mind.
There is also a takeaway message for lawyers, which is that, in this age of social media, any letter they send may end up in the (very) public domain. The widespread backlash against Greendales’ actions has not only been directed at Greendales; their lawyers have also found themselves in the middle of a PR nightmare.
Co-Author: Clare Mann, Trade Marks Partner