Time to Brighton up that brand portfolio?

In recent days, reports have emerged of an application to the UK Intellectual Property Office (“IPO”) by Brighton & Hove Albion Football Club (“BHAFC”) to trade mark the terms ALBION and THE ALBION.

The news has attracted media attention for several reasons; not least, because the word “Albion” has different meanings unrelated to BHAFC, including as an alternative name for Great Britain. In addition, the word is included within the name of several other professional football clubs in the UK, including West Bromwich Albion (“WBA”) and Burton Albion (“Burton”).

This article explores the possible motives for BHAFC’s trade mark application, in the context of similar trade mark applications in recent years by other football clubs. It also considers why football clubs might now be looking to take an increasingly ‘commercialised’ approach to their business operations.

Trade marks – a brief overview

Trade mark protection is commonplace in football. A host of football clubs have trade marks for their respective names, nicknames, club mottos, stadium names, club crests and other types of imagery. By necessity, these are marks capable of: (1) being represented in such a way as allows the determination of the clear and precise subject matter of the protection afforded; and (2) distinguishing the goods and services of one undertaking (i.e. the club) from those of another undertaking.

Fundamentally, a trade mark registration seeks to protect the applicant’s exclusive right to use the relevant mark and so prevent third parties from using that mark in the course of trade (i.e. to sell goods and services) without the applicant’s consent. This protection, together with any other intellectual property (“IP”) rights the applicant seeks to rely on, can help the applicant to ‘build their brand’. For example, football clubs will often look to prevent sales of unauthorised merchandise that uses their protected marks, or confusingly similar marks, on a range of items such as posters, badges, stationery and clothing.

In any trade mark application to the IPO, the applicant will need to specify in which of the 45 “classes” they want to register their mark and seek the abovementioned protection, with each class identifying certain types of goods and services. For example, class 25 is popular among football clubs because it covers clothing, footwear and headgear.

A short journey through history

To provide some example context, the word marks CHELSEA FOOTBALL CLUB and EVERTON FOOTBALL CLUB are registered trade marks by Chelsea and Everton as part of their respective trade mark portfolios (i.e. in addition to their crests, logos and various other registered marks). Both clubs have also been able to secure trade mark protection for their names CHELSEA and EVERTON without the term “Football Club”. Similarly, Tottenham Hotspur Football Club secured trade mark protection for the name TOTTENHAM in a significant IPO ruling over 17 years ago. Each of these clubs were able to do so despite the geographical link to their names.

In contrast, readers may recall the unsuccessful attempt last year by Liverpool Football Club (“LFC”) to trade mark the name of the city across a range of classes, via two applications to the IPO. Although the decision itself is not available publicly, the IPO’s decision to refuse LFC’s main application was primarily due to Liverpool’s “geographical significance” as a city in comparison to other place names trade marked by UK football clubs. In other words, Liverpool as a city is famous for more reasons than LFC. Whereas the same cannot be said for the North London district, Tottenham.

LFC decided not to challenge the IPO’s refusal of its main application (relative to a higher number of classes) and not to proceed with its second application. At the time the applications were made public, there was a degree of public opposition. This is likely to have influenced LFC’s decision not to progress either application. Nevertheless, LFC continues to enjoy trade mark protection over its full club name (i.e. the mark LIVERPOOL FOOTBALL CLUB) alongside other terms and logos.

Brighton’s trade mark pursuit

BHAFC already have trade mark protection for the name BRIGHTON & HOVE ALBION across a wide range of classes (namely 6, 9, 14, 16, 18, 21, 24, 25, 28, 35, 36, 38, 41 and 43). With an eye on its commercial operations, BHAFC now appear to have identified that there is brand value in the names ALBION and THE ALBION.

BHAFC’s application has now been accepted and published by the IPO, thus appearing to indicate the IPO’s view that the marks are sufficiently ‘distinctive’ (an essential characteristic for a registered trade mark). It means the application, as it stands, is on course to be granted and the marks registered unless an opposition is filed in the coming weeks.

Reportedly, BHAFC have already sought to communicate with WBA and Burton that the prospective registrations will not affect those clubs’ ability to use the Albion suffix in their own right. BHAFC will also be hopeful that there is no opposition from third parties from the perspective of any perceived confusion with “Albion” as an alternative name for “Great Britain”.

BHAFC are seeking protection across the same range and number of classes used for its fuller club name (as above). However, their application has sought to make clear certain distinctions. For example, a number of those prospective class registrations indicate that the relevant goods would be “related to football and/or being items of merchandise connected to Brighton & Hove Albion Football Club”. It will be interesting to see whether these caveats will be sufficient to keep any sustained opposition at bay.

Maximising revenue post-lockdown

Having filed the application in December, evidently BHAFC had been contemplating the move to trade mark these terms for some time and seemingly irrespective of COVID-19. In any event, it brings into focus what other football clubs might be doing to protect and maximise their revenue streams in a post-lockdown universe.

The damaging impact of the pandemic on football clubs is widely known. The loss of match-day revenue both now and in the future for as long as games are played behind closed doors (“BCD”), combined with partial rebates to broadcasters for the 2019/20 season, means clubs will be minded to explore alternative sources of revenue.

The short-term focus for many of these clubs is financial solvency and survival, particularly in the English Football League (“EFL”). Since the suspension of elite-level football in the UK on 13th March, clubs have continually sought ongoing guidance and additional methods of financial support from English football’s governing bodies. Fundamentally, however, more clubs will be searching for commercial solutions that will sustain them over the long-term.

The author’s previous article considered the possibility of naming rights models for clubs’ stadiums and/or other tangible assets, or clubs using their empty stadiums as an opportunity to maximise perimeter advertising during BCD matches and take advantage of higher television audiences.

Clubs (and other organisations) might also consider this a worthwhile period to review their IP portfolio. In particular, to make sure they are not ‘losing out’ on money that might otherwise be gained through merchandise and licensing agreements with manufacturers and other service providers, in exchange for a fee. This process might involve clubs’ filing more applications to extend their registered IP portfolios, or otherwise ramping up efforts to defend those portfolios. Manchester United’s legal challenge against Sega Publishing and Sports Interactive for its use of the club’s name in the Football Manager gaming series is one topical example of the latter scenario, also proving there is no club ‘too big’ to engage in such an exercise.

Closing comment

It is not surprising to see a Premier League club like BHAFC seeking to establish, protect and grow its IP portfolio. Whether or not their application to trade mark a word that has a shared association with other football clubs will be successful, other clubs could perhaps do worse than to consider similarly ambitious strategies geared at increasing their commercial revenues, especially during these uncertain times.