25 April 2018

Dulwich Hamlet FC -v- Southwark Council and Meadow Residential LLP – The club’s toughest match

Dulwich Hamlet Football Club (‘DHFC’) is flying in the Isthmian League Premier Division, with promotion to the National League South very much a possibility. However, off the pitch the club is fighting for its very existence, having been evicted from its home and informed that it should cease using the trade marks “Dulwich Hamlet Football Club”, “The Hamlet” and “DHFC”. The warning was issued as part of a dispute between the club and Southwark Council and Meadow Residential LLP (‘Meadow’), the owner of the land on which DHFC’s Champion Hill ground is built.

How did the dispute arise? Meadow applied to Southwark Council for permission to build a residential development on the site around Champion Hill.  In the meantime, a company affiliated to Meadow (Greendales IP LLC – ‘Greendales’) applied to register “Dulwich Hamlet Football Club”, “The Hamlet” and “DHFC” as UK trade marks and the applications matured to registration in February 2018.  This was despite the fact that DHFC (formed in 1893) had been using all three trade marks extensively in the UK prior to the filing date of these applications.

Meadow’s planning application was rejected by Southwark Council following which Meadow:

  1. Terminated DHFC’s licence to play at Champion Hill;
  2. Served a statutory demand on DHFC demanding £121k in backdated rent and other charges; and
  3. Sent a cease-and-desist letter to DHFC demanding that it immediately cease use of the trade marks “Dulwich Hamlet Football Club”, “DHFC” and “The Hamlet” on any printed literature and any online activity including websites and twitter.

Although each of the demands would have significant repercussions for DHFC, the trade mark demand was arguably the most serious.  DHFC enjoys goodwill in its name having used it since 1893 and although rebranding isn’t straightforward for any business, it is particularly difficult for a football club because the name of the club is more than merely a badge of origin, being more akin to a badge of identity/allegiance.

You may well be asking yourself whether it can be right that a third party can register trade marks that have been used so extensively by another entity and you certainly wouldn’t be alone in thinking along those lines; Meadow’s demand sparked a great deal of furore in the press and generated significant negative publicity for Meadow and its legal representatives.

The UK trade mark authority does not block any trade mark application on the basis of earlier third party rights; it is up to the owner of an earlier “right” to attempt to prevent such an application from progressing by filing opposition during the opposition period.  If DHFC had registered its trade marks in the UK, it would have been notified about Greendale’s applications but, since DHFC had not done so, it is likely that the applications passed it by and that it therefore missed the opportunity to oppose them.

However, the fact that the trade marks have matured to registration does not bar DHFC from contesting their legitimacy.  It is possible to cancel UK trade mark registrations on a number of grounds and, in this case, there are two relevant grounds that DHFC could pursue:

  1. That it enjoys earlier unregistered rights in the trade marks because it had used them extensively before October 2017 when the trade mark applications were filed by Greendales (to succeed, DHFC would need to produce documentary evidence of its longstanding earlier use of the marks).
  2. That the trade mark applications were filed in bad faith (dishonestly); DHFC could potentially allege that Meadow/Greendales knew that DHFC had earlier unregistered rights in the marks and that the applications were filed with the intention of disrupting the business of DHFC.

Whilst these options remain open to DHFC, the trade mark aspect of the dispute appears to have been settled with Meadow reportedly confirming that it intends to transfer ownership of the marks to the Dulwich Hamlet Supporters Trust (at no cost).  At the time of writing the trade mark registrations still stand in the name of Greendales and to the best of my knowledge, the wider dispute remains to be resolved (in fact, it appears that Meadow submitted a further pre-planning application to Southwark Council in April 2018).

Regardless of what happens from here, two important trade mark lessons can be learned from this dispute:

  • Register your trade marks – otherwise another entity might register them instead and attempt to use the registrations as leverage against you in a dispute.  Although it is possible to cancel registered trade marks if you have earlier unregistered rights (and can prove it), it is generally far less time consuming and costly to oppose trade mark applications on the basis of an earlier trade mark registration instead.  Had DHFC registered “Dulwich Hamlet Football Club”, “The Hamlet” and “DHFC” as UK trade marks it probably would’ve been able to stop Meadow’s applications relatively easily.
  • Although speedy action is recommended, if you are beaten to the punch and another entity registers your trade mark(s), all is not necessarily lost: take advice from a Chartered Trade Mark Attorney as to whether you might have grounds to cancel the offending registration(s).