Bury AFC are winning battles on and off the pitch

Trade marks are not exclusive to big brands such as McDonalds, Coca Cola or Nike, but can in fact apply to every business across the world, including the independent coffee house on your high street the medium-sized electrical distributor minding its own business along the M1 somewhere, or in this case, Bury AFC’s club crest including the town’s coat of arms.

Bury FC was a household name in the football league, until the 2019-2020 season, when they suffered a financial crisis and were subsequently expelled from the English football league. With no club to support, the fans wishing to continue the legacy of their beloved club came together to form Bury Association Football Club (Bury AFC).  The fairytale story of a fan-owned club rising through the leagues to glory looked on the cards until the ugly head of a trade mark dispute popped up.

Former Bury owner, Steve Dale, made an application to the UK Intellectual Property Office (UK IPO) to register Bury FC’s club badge in his name, which would prevent Bury AFC from using it unless they were granted permission from him.  Very much the pantomime villain in this scenario, Steve Dale faced great opposition from the good folk of Bury, and an opposition was made to his trade mark application, following a vote in which 99% of the 600 who participated, voted in favour of pursuing a formal objection.

Fast forward to March 2021 and the UK IPO found in favour of the town of Bury and refused Mr. Dale’s application.  While the full details of the hearing have not been released, this story raises several key points in relation to opposing a trade mark.

What is an opposition?

Once a trade mark application has been approved for publication by the Intellectual Property Office (the IPO), it is published for two months.  During this period, if someone wants to prevent the trade mark being registered, then they may file an opposition against the application.

Why would someone file an opposition?

Oppositions are usually brought by owners of an earlier trade mark application/registration whose trade mark is identical or similar to the new trade mark application. Other reasons for opposing a trade mark application include:

• where the trade mark is not distinctive or would not identify/distinguish the applicant’s goods or services from other traders;
• where the trade mark consists wholly of a mark which identifies/designates the goods or services for which the trade mark will be used;
• where the trade mark has become a customary word or phrase in language or in a particular trade;
• where a trade mark has been filed in bad faith (for example, where a person files an application in order to sell it for profit, to an innocent party that has been using the same unregistered mark beforehand); and
• where someone uses a trade mark that is unregistered, but which has acquired a reputation and is similar to the trade mark in the application.

What happens if I don’t file an opposition now?

You can act later (called an ‘invalidity’ action). However, it will cost more and not acting now may make it more difficult to succeed. Furthermore, if you leave it more than five years after the registration, the applicant will have a defence that you waited too long.

What is the process?

If you are considering bringing an opposition, in some cases, it is worth first writing to the applicant and asking them to withdraw the application. Hopefully, they will do so, saving you the time and cost of having to proceed with the opposition. However, in some cases, the applicant will propose that you both enter into a ‘co-existence agreement’ – usually meaning that the applicant will agree only to trade in particular fields (where there will be no confusion with your trade marks).

Still reading?

If the above still has not answered your questions, you may need to file formal opposition proceedings and get Briffa on board to assist you further.  Alternatively, you may need advice defending an opposition, in which case we can also help you.

If you would like further information on trade marks, or any aspect of intellectual property, just get in touch with the team at Briffa and we will be happy to help you.