Bend it like Meadow
In todays’ digital world it is more important than ever to register your trademark regardless of which industry you are active in.
Dulwich Hamlet FC (DHFC), a non-league UK football team, recently learned this lesson the hard way when it got caught in the middle of an infected legal dispute between Southwark Council and Meadow Residential LLP.
In February 2014, Meadow purchased the land that DHFC’s Champions Hill ground is built on in, with a plan to build houses, flats and a new football ground. The Southwark Council denied the property developers planning permission, but Meadow was not ready to give up and took a somewhat unconventional next step. To change the council’s mind and open up for negotiations, a subsidiary of Meadow filed trademark applications for “Dulwich Hamlet Football Club”, “The Hamlet” and “DHFC” and the registered marks were then used in an attempt to evict DHFC from the grounds.
A cease and desist letter was sent to DHFC, referring to Greendales’ ownership of the trademarks and informing that Greendales required that the trademarks “no longer be used on any printed literature and any online activity including websites and twitter”. However, only one day later, Meadow published a press release stating that it has contacted Dulwich Hamlet Supporters’ Trust to facilitate the immediate transfer, at no cost, of the trademarks to preserve the name and identity of the club itself, irrespective of the continued insolvency of DHFC.
Even if Meadow would not willingly have handed over the trademarks, DHFC’s 125-year-old history makes it likely that it has unregistered rights that predate Greendales’ registrations, which could entitle the club to invalidate Greendales’ marks.
The dispute is not over but the conclusion is yet again, register your trademark before someone else does! And as important, don’t forget to monitor your registered marks. Even though a registration gives you exclusive right, you are responsible for defending that exclusivity from third parties with brand names or logotypes that might be infringing on your intellectual property.
Otmore has an in-house developed watching service that monitors applications for identical or even similar trademarks, enabling you to act in an early stage to prevent them from being registered. The latest addition to the software is that the trademark watch service now detects potential infringement cases in App Store. Contact us for more information!