A-League football (soccer) club Melbourne City (the Applicant), was shown the red card by the Australia Trade Mark Office (ATMO) as their application for the words “Melbourne City Football Club” (the Trade Mark) was successfully opposed by a rival sporting code.
On 16 January 2014, the Applicant filed its Trade Mark for registration. Although running into some difficulties, they were able to appease the ATMO by restricting its claimed goods and services to those “being in connection with the game of sport or football (soccer)”.
However, the Applicant was forced into extra-time, as Australian rules team “Melbourne City Football Club Inc” (the Opponent) lodged a notice of intention to oppose the Trade Mark.
The Opponent relied upon (amongst others) section 41 of the Trade Mark Act 1995 (Cth) to substantiate its claim. The Opponent argued that the Trade Mark was not inherently adapted to distinguish the Applicant’s goods and/or services from those of other traders.
The Applicant filed with the ATMO a variety of documents evidencing use of the Trade Mark throughout the wider community. However, the majority of the evidence related to the Applicant’s logo, which adorns its team uniforms and merchandise. The ATMO delegate was not persuaded by this evidence, determining that usage of the logo did not show that the Trade Mark itself was inherently adapted to distinguish the Applicant’s goods and/or services from other traders.
Further, the delegate determined that other traders in the Melbourne Football fraternity were likely to desire to use the Trade Mark. Therefore, the delegate rejected the Applicant’s Trade Mark.
Word marks can be difficult to obtain. Whereas a logo may become obsolete by way of a rebrand, a word mark offers the greatest degree of protection and flexibility. Although the Applicant may find success in registering its logo as a trade mark, the ATMO will not grant the Applicant a monopoly over its name.
When deciding upon a name or brand for your business, it is vital that you do not choose a commonly used word or phrase, including terms that are frequently used in the relevant industry. Further, if you become aware of a competitor who has applied for a trade mark that could threaten your operations; you can apply through the ATMO to oppose the application.
If you require assistance to create, and register, a new trade mark, or wish to oppose a competitor’s trade mark application, please do not hesitate to contact Iain Freeman.
