Reddie & Grose’s Brighton-based trade mark attorneys report on the most recent football team trade mark application to catch the headlines.
Brighton and Hove Albion FC (‘BHAFC’) have caused a bit of a stir in the press and among some of their fans by applying to register ALBION and THE ALBION as UK trade marks. The concern is that BHAFC have unjustly laid claim to an ancient name for the British Isles and that this move will cause problems for the many local businesses that also use the word ALBION.
We love seeing the mainstream press pay attention to trade mark applications, but in this case fans need not worry about BHAFC overstepping the mark with their trade mark protection.
Who are the ALBION?
The word Albion has its roots in ‘Albiōnōn’ a name for the British Isles first used by the Ancient Greeks. ‘Albho-’ meant ‘white’ in earlier European languages (as can be seen in other place names like the Alps and Albania) so linguists have speculated that that ‘Albion’ referred to the white cliffs that can be seen from the continent and that act as a landmark for the narrowest channel crossing. The name was picked up by the locals who used it for a few centuries, but it was forgotten after successive waves of invasions. There was a brief revival in the middle ages when it was used by a number of Anglo Saxon Kings who styled themselves ‘Emperor of Albion’ and it is attested to in a number of surviving myths and legends from this time. These medieval stories went on to inspire the romantic poetry of the 1800’s, which often featured the name, around about the same time that people started taking holidays to seaside resorts and that these growing towns started naming new hotels and streets after the ancient British pseudonym ‘Albion’.
It was not long after this that Brighton and Hove Albion FC adopted the name, perhaps following the local trend. Since then a growing number of local businesses in Brighton have taken up the Albion name, from dental practices to Tai Chi studios. In fact there are 73 UK trade mark registrations featuring the word ‘Albion’, 23 of which consist of the word ALBION on its own.
What does a trade mark protect?
Some commentators have accused BHAFC of appropriating an ancient and culturally significant word, but the reality of registering a trade mark is that you only protect the mark within a narrow commercial sphere. Outside that space people are free to use the word as they wish. (See our detailed guidelines to learn more about what a trade mark can protect).
A trade mark registration gives its owner the right to object to someone else’s use of the same mark, or a similar mark, when that mark is used in relation to the same or similar goods as those covered by the registration. In a limited set of circumstances a trade mark owner can also prevent someone using the same or a similar mark in relation to goods and services that are not identical or similar to those that are covered by the registration. This is possible if the later mark takes unfair advantage of or is detrimental to the distinctiveness and reputation of the earlier mark.
BHAFC’s application covers a variety of merchandise products relating to football, as well as fundraising, broadcasting and organising events, all relating to football, and providing food and drink at a football stadium. The legal protection that it affords does not give BHAFC free reign to prevent other businesses, like the Royal Albion Hotel on the Brighton seafront for example, from using the ALBION mark.
If BHAFC manage to register their ALBION mark, the only way that they will be able to prevent another business using an ALBION trade mark for goods or services which are not identical or similar to those covered by their registration is if that later mark was used in a way which takes unfair advantage of or is detrimental to the reputation or distinctive character of BHAFC’s ALBION mark. Importantly, if the later user could show that they have ‘due cause’, then this provision cannot apply. As with most trade mark matters, the assessment of this claim is dependent on the facts at hand, and one factor that will be assessed to determine the strength of the ALBION mark is the number of other Albion trade marks in use on the market, in the world of football and in the other the commercial spaces that BHAFC operate.
According to an article written by The Telegraph, BHAFC’s application was a move to protect fans from counterfeit merchandise. This is supported by the wording of the application, because the list of goods and services for which protection is sought contains a number of limitations. For example, the merchandise goods of the application are followed by the wording “all of the aforesaid goods being related to football and/or being items of merchandise connected to Brighton & Hove Albion Football Club”. This reduces the scope of BHAFC’s rights in the mark, but ensures that these rights are fit for the purpose of tackling counterfeit BHAFC merchandise.
Communicating brand protection strategy
If BHAFC manage to register their ALBION mark then this will bolster their trade mark portfolio. This registration would improve their position against counterfeit goods that use the word ALBION on its own, which would be harder for BHAFC to address with their earlier registrations of the words “BRIGHTON & HOVE ALBION” and various club logos that feature these words.
However, a misunderstanding among fans about a brand’s motivations for protecting their IP can sometimes damage brand equity. We’ve seen backlashes in the past where people have got the wrong end of the stick when it comes to trade mark protection, for instance, the accusations of linguistic and cultural appropriation levelled at Disney for their US registrations for “HAKUNA MATATA” (because – ♫it means no worries♫ – in Swahili).
Communicating a brand protection strategy is not always a necessary step, but when marks are involved that have local or cultural significance, this could be a wise move to avoid misunderstanding and annoyance in the consumer base.
Football club trade marks
Last year we reported on Liverpool FC’s application to register the word LIVERPOOL in the UK, which was rejected because the word was too “geographically significant”. While the word ALBION does have a geographic dimension, the exclusion of geographic names from trade mark protection is focused on those names with a contemporary relevance to consumers. Ancient place names which are not in common use will not be affected by this exclusion.
Liverpool’s application was seen by the UK Intellectual Property Office, the press and the public as an overreach. Even though they made sure that all of the goods and services of their application only related to football, the fact that they were trying to register the name of a city, and one which is home to a number of other football teams, led to their application being rejected. The other football teams in Liverpool should be able to freely use the word.
This is not to say that it can’t be done. A number of other English sides have seen more success registering their team names as UK trade marks in spite of their geographic meanings, among them TOTTENHAM and EVERTON. However, this may be because these marks are the names of areas of a city rather than the city itself
The latent geographical meaning of the ALBION mark does not pose a problem to BHAFC’s application. However, the fact that the word ALBION is also used in the name of a number of other football clubs throughout the UK means that the application is still on uncertain ground.
While the UK Intellectual Property Office have accepted the mark as having the minimum level of required distinctiveness (i.e. ability to identify BHAFC as the origin of the goods and services), we can see from the register that an opposition has been filed by West Bromwich Albion Football Club Limited. We will be keeping an eye on this case, and will update this blog in due course
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.