Football clubs and intellectual property rights

I'm a football fan. That's soccer to many people from the likes of the US, Canada, Australia, New Zealand, South Africa and even just across the Irish Sea in Ireland. Readers from these countries may not appreciate the "Beautiful Game" but they should fear not as a great number of my compatriots also do not understand what the appeal is of "watching 22 men run around kicking a ball" either.

Nevertheless, the European football season will rapidly be upon us and the commercial success of the game in Europe is obvious.

How do Europe's leading clubs compare when it comes to their IP protection? I have compiled some statistics using data from CTM-Online, RCD-Online and ROMARIN. As football becomes more and more globalised it made sense to me that research should be concentrated on who has sought protection across the European Union and through the Madrid Protocol or, in other words, outside of their national borders.

I have used Deloitte's report on Europe's 30 biggest clubs supplementing it with the Old Firm and the biggest side in the EU capital of Brussels, Anderlecht.

Rangers may prove to have the best IP portfolio for a club in Scottish League Division Three, that's assuming they are a successor in title to these IP assets. The original Rangers went into administration and will eventually be liquidated; the 'newco' will probably start life again three divisions lower. (You may have seen some additional comment on the Rangers brand on the IPKat recently, which I feel many football fans will disagree with.)

Statistics will never tell the whole story. Some of the more established teams may have obtained protection in other countries prior to the advent of the Community Trade Mark or could have different registration strategies. Some team names, particularly those of a place name, would be difficult to register as word marks. Registered designs will be unavailable for a club crest that has been unchanged for a number of years. A number of the design registrations are for new stadiums (and some for mascots) and many clubs have not moved grounds for many years.

Liverpool's historic Anfield home but for how long?
Designs for a new stadium are registered with OHIM

Perhaps interestingly given the tribal nature of football, a very cursory check has 12 of the 33 featured clubs using a representative based in another city. Furthermore, two sets of city rivals use the same representative, although the likelihood of disputes in the trade mark arena are far less than on the football field. Two of the 33 represented themselves directly before the OHIM. Is this a surprisingly low number given the in-house legal expertise these clubs often have?

The statistics would put Chelsea top of the European league - perhaps apt given they are the current champions of Europe. As a non-Chelsea fan, I have to admit to hoping a team with a smaller IP portfolio has a successful season ahead!

Volksparkstadion: Home of Hamburger SV and 4 CTMs

Trade Mark Owner	City, country	No. of CTMs	No. of RCDs	No. of IRs	Total
REAL MADRID CLUB DE FUTBOL	Madrid, Spain	22	0	2	24
FUTBOL CLUB BARCELONA	Barcelona, Spain	21	0	14	35
MANCHESTER UNITED LIMITED	Manchester, England, UK	28	0	8	36
FC Bayern München AG	Munich, Germany	7	5	6	18
The Arsenal Football Club Public Limited Company	London, England, UK	18	0	4	22
CHELSEA FOOTBALL CLUB LIMITED	London, England, UK	38	1	11	50
A.C. Milan S.p.A.	Milan, Italy	20	0	14	34
INTER BRAND S.r.l.	Milan, Italy	12	0	5	17
The Liverpool Football Club and Athletic Grounds Limited	Liverpool, England, UK	8	4	4	16
Fußballclub Gelsenkirchen-Schalke 04 e.V.	Gelsenkirchen, Germany	3	0	0	3
Tottenham Hotspur Limited	London, England, UK	22	5	3	30
Manchester City Football Club Limited	Manchester, England, UK	3	1	0	4
Juventus F.C. spa	Turin, Italy	11	0	5	16
Olympique de Marseille SASP	Marseille, France	6	0	1	7
Soccer Società in Accomandita Semplice di Brand Management S.r.l.	Rome, Italy	6	0	5	11
BVB Merchandising GmbH	Dortmund, Germany	7	0	1	8
OLYMPIQUE LYONNAIS (société anonyme sportive professionnelle)	Lyon, France	5	0	3	8
Hamburger Sport-Verein e.V.	Hamburg, Germany	4	1	5	10
VALENCIA CLUB DE FUTBOL, S.A.D.	Valencia, Spain	22	3	9	34
S.S.C. NAPOLI S.p.A.	Naples, Italy	1	0	1	2
CLUB ATLETICO DE MADRID, S.A.D.	Madrid, Spain	2	0	1	3
Verein für Bewegungsspiele Stuttgart 1893 e.V.	Stuttgart, Germany	3	0	0	3
Aston Villa Limited	Birmingham, England, UK	7	1	0	8
SPORT LISBOA E BENFICA	Lisbon, Portugal	2	0	3	5
Sport-Verein "Werder" V. 1899 e.V.	Bremen, Germany	2	0	4	6
Newcastle United Football Company Limited	Newcastle upon Tyne, England, UK	3	0	0	3
AFC Ajax NV	Amsterdam, Netherlands	1	0	6	7
The Everton Football Club Company Limited	Liverpool, England, UK	1	0	0	1
WEST HAM UNITED FOOTBALL CLUB LIMITED	London, England, UK	3	0	1	4
Sunderland Association Football Club Limited	Sunderland, England, UK	2	0	0	2
Celtic F.C. Limited	Glasgow, Scotland, UK	7	0	3	10
THE RANGERS FOOTBALL CLUB PLC	Glasgow, Scotland, UK	3	1	2	6
Royal Sporting Club Anderlecht	Brussels, Belgium	6	0	0	6

Statistics are provided in good faith but may contain errors. There is some duplication between the figures of CTMs and IRs when the European Community has been designated in an International application. It may contain abandoned and lapsed cases. Representative check was very cursory - only the first CTM listed was checked. This post is really just a bit of fun.

Zambia - "first to file"

The case has been reported elsewhere, but in case you missed it. In 2009, the Zambian Patents & Companies Registration Agency refused an opposition based on unregistered trade mark rights in use in the country stating that unregistered rights cannot form the basis of an opposition. This has since been confirmed by the Supreme Court of Zambia.

Summarising, Zambia was thought of as a typical Common Law "first to use" jurisdiction whereby the first user of a mark enjoys rights in the mark (contrary to the Civil Law principle of "first to file" (an application)). This decision has now changed the situation in Zambia.

It is not expected to change any possibilities of using the common law tort of passing off, like in the United Kingdom.

Nevertheless, brand owners should consider registering their trade marks in Zambia. Those that own International trade marks in Zambia may wish to take action to register their trade marks nationally as a designation of Zambia in an International Registration may not provide protection; Zambian trade mark legislation has not been amended to reflect Madrid Protocol membership.

As African Trade Marks Offices go, Zambia functions well although this decision helps African practice maintain a level of unpredictability.

WIPO Madrid Highlights - Issue 2‏

WIPO have issued their second edition of their e-zine Madrid Highlights following on from their first edition in March.

Most of the publication is, of course, self-explanatory but as lots of it uses "WIPO speak", which is not a criticism as they are obliged to use this language, I will comment in simpler English.

In the first Madrid Working Group section, point 1 refers to the deletion of a section which has become obsolete. This needs to be agreed but would appear a formality.

The second point refers to Article 9sexies of the Madrid Protocol. It is not often anyone would regard the Madrid Protocol as sexy! What this currently means is that if contracting parties are both members of the Madrid Agreement and Madrid Protocol when it comes to examination and fees they follow the Madrid Agreement. For example, if you happened to be a Swiss applicant (basing your International application on a Swiss registration) designating China then the Chinese Office would have to examine the mark within 12 months and a complementary fee (not an individual fee) would be charged for China. Switzerland and China are members of the Madrid Agreement and Madrid Protocol.

This does put applicants from countries that are parties to both the Madrid Agreement and Madrid Protocol at an advantage in terms of being able to obtain quicker protection and cheaper protection for some countries. Applicants from the likes of the United States, the UK, Australia and Japan (i.e. Madrid Protocol only members) may consider this unfair.

On the flip side, Trade Marks Offices in the likes of China are under more pressure to examine quickly and they are losing out on official fees. China lost out on nearly 10 million Swiss francs last year. That may represent a relative drop in the ocean to an economy the size of China's but it could pay for a few examiners. The Office of Belarus, as another example, lost out on over 4 million Swiss francs last year. With processing delays of 3-4 years on national applications think of the number of examiners and support staff they could recruit to reduce their backlog.

Of course, our Swiss applicant as per the example above, is happy - a cheap trade mark within 12 months. The WIPO document is merely asking the Working Group to consider Article9sexies but, reading between the lines from how the information has been presented, it is encouraging them to close this "loophole".

For now, applicants from EU countries that are Agreement and Protocol members (e.g. France, Germany) would find it advantageous to file International applications based on national applications/registrations rather than Community Trade Marks.

The third point relates to a suggestion from the Association romande de propriété intellectuelle (a professional IP association for French-speaking Switzerland) to introduce division in International Registrations. This was back in 2008 so you can see it takes a while for things to progress in the corridors of power at WIPO.

It basically provides for a designation of an International application (i.e. not the entire application for all countries) to be divided specifically when, during examination, some goods/services have been accepted but others are subject to objections. It would allow the accepted goods/services to move forward to obtain a Statement of Grant and the objections raised can be argued against separately.

The merger provisions will allow divided designations to be merged back together, assuming the objections are overcome.

This has not been agreed yet but I can anticipate it coming into force. It will only be applicable to member states that have division provisions within their national laws. For example, division is possible for Community Trade Marks. Their current guidelines do not allow it through the Madrid Protocol: "The division is not available for an international application under the Madrid Protocol designating the EC: Their Register is exclusively kept at WIPO. The OHIM does not have the authority to divide an international designation."

Point 4 relates to translations between the three official languages (English, French, Spanish) and, in my opinion, will not impact users too much. It is more to manage WIPO workloads and not to translate for translation's sake.

The Madrid System Legal Forum is set up "to facilitate the free exchange of ideas concerning the present and future of the Madrid system". Well, not quite. Disappointingly, this is restricted (as you can see) to staff from member state Trade Mark Offices. I can appreciate WIPO not wishing all and sundry making comments and suggestions but they could at least give access to professional bodies such as INTA, ECTA, ITMA, etc. It is my usual criticism of WIPO that it is a "closed shop" or like an old state monopoly that does not seek the opinions and feedback from its customers (trade mark owners and representatives) enough.

Most of us will already be aware that the Philippines and Colombia have joined the Madrid Protocol. I have heard that, like with national applications, Affidavits of Use will be required for IRs designating the Philippines to be filed with the Intellectual Property Office of the Philippines, not WIPO.

The rest of the document requires little explanation. I was keen on the 'Madrid Tips' section on Second Part Individual Fees. However, because they must keep to their "WIPO speak" they cannot use everyday IP language to most of us: these are basically registration fees. I would also recommend using WIPO's excellent E-Payment facility to pay these which gives you an immediate e-mail confirmation.

Watch it!

I began what would turn out to be my career in the field of trade marks when I was a teenager. I'd like to claim this was only a few years ago, but my mother taught me never to lie.

One of my tasks in these early days was to reproduce the marks advertised for opposition purposes in the UK Trade Marks Journal into a more concise publication, the "Trade Mark Record". My employers had permission from the Crown to do this although I don't think Her Majesty would have been too impressed with the scissors and glue method to its production!

This was then sent out to a number of subscribers to flick through. For most it was to find marks they may wish to oppose although it did also go to, for example, a Trade Marks Registry in the Caribbean so they could keep themselves abreast of what the UK Trade Marks Registry was accepting at the time. It coincided with a huge effort to clear a backlog of UK applications, helped by the recent introduction of new legislation, that meant many Trade Mark Journals were double volumes.

If my memory serves me correctly, a yearly subscription was not expensive but it would have been roughly the same as a standard UK watch (with the usual commercial watch providers) at today's prices.

In those days, watching (in today's sense of the word) was not done with the same regularity. The UK still issued citations of prior rights and whilst the CTM was on the horizon, it was going to be a little while before in came into force and then the first CTM Bulletin was published. (However, it would be the CTM that would help consign the Trade Mark Record to the history books.)

Watching services did exist. The UK's most well known provider had existed since just after the Second World War driven by the Scotch Whisky Association's need to spot imitation marks around the globe, something that would have met with my late grandfather's approval (the Colman in my company's name). However, technology has moved on significantly not just from the 1940s but from the 1990s too and back then watching would have been a laborious (and thus expensive) task.

It still is to a certain extent. Languages are complex and understanding their subtleties is still something more suited to qualified human brains. It is arguably at its most notable with the Chinese languages. I previously worked next door to a watching team and watching, if you'll excuse the pun, a trade mark watcher at work really brought home their unusual skills.

I hope this trip down Memory Lane provides some entertainment to those with a sentiment for trade mark history, but I will try to bring us up-to-date and make some points of modern interest.

Watching is now dominated by a few global players that have built up the infrastructure and resources (and with this I also mean, as I grin slightly cynically, their sales and marketing teams) to offer these services in a consistent and relatively cost effective manner. As more Gazettes move to being published on-line, the increased automation of watching should help make it even more affordable.

However, what I have found is that large trade mark owners can find themselves watching too many trade marks. Aligning watching with renewal strategy can be overlooked particularly where the two fall to different responsible people or teams. Reviewing portfolios in their entirety and monitoring non-use dates is also something beyond the capacity of many departments. Personally, I would like to see watching companies work more closely with their clients to strip out the "deadwood" being watched. This may prove unlikely as it could result in a loss of revenue but I do not think they should underestimate the goodwill it could provide and what may come of that.

Large corporates have a lot of bargaining power, and you could say more so in the current economic climate, but I am not aware of any that have placed demands on their agent network with respect to trade mark watching. Requesting that agents watch trade marks (for free, we will come to this) could result in savings of not only money, but also time. A local specialist will ignore irrelevant watch notices that computers and trade mark watchers may not - the simple reason is they are more in tune with local practice and may also be better aligned with a client's strategies - so the client receives a lot less watch notices to review. It could not only save money on initial watching fees, but in the general management of watches (e.g. watch renewals and cancellations).

Could law firms organise this for free? This is debatable. The theory behind it is that they would receive any contentious work and the related $$$ (or €€€ or whatever) that even if they need to organise the watching externally they could absorb the costs. Offering for free and really doing it for free are two different things though. In Spain and other countries where publication happens before examination, complimentary internal watching services have been provided for a long time. Some Spanish firms still provide this whereas others - who I imagine question the value if they've filed a CTM and then cannot watch all national EU publications - no longer provide this service. Firms that do provide this service are often more expensive than those that do not. I'll allow you to draw your own conclusions. It might be something that you can live with.

This blog is merely food for thought. I am not supporting one way over others as different circumstances may prefer one over another. Is quality control and risk best managed internally or externally? Receiving watch notices, even irrelevant ones, helps you monitor industry trends and competition so if someone else does this how are you keeping informed? (Of course, applicant watches can be set up for specific competitors.)

This blog talks about watching in isolation - and only trade mark watching at that, no domain names, no company names, no internet, etc. In practice, how watching fits in with other parts of your practice will be very important. It may sit side-by-side with filings/prosecution and renewals but analytically speaking is the sister of trade mark searching.

Got a Registered Community Design, got Europe?

As my 'Got a CTM, got Europe?' blog proved popular and continues to receive regular hits - and following on from my blog on the rising importance of registered designs - it seems worthwhile to write about protecting designs throughout Europe.

As before, I will use the definition provided by Wikipedia for Europe.

We will focus on the applicant being from a member state of the Hague System (Geneva Act) e.g. an applicant from the European Union. This rules out applicants from non-Hague countries such as the United States. However, a US applicant with "a real and effective commercial or industrial establishment" or "habitual residence" in a member state could take advantage of the system. Ownership could also be through a trust company incorporated in, say, the EU and then licensed back. However, there is no provision for the recording of a license at WIPO against a Hague International Registration which could make this less desirable.

Benefits of the Hague system, contrasting to the Madrid Protocol for trade marks, are:

1. There is no need for a base registration.
2. You can designate your own country (e.g. the EU) in an application.

This means a single International application can be made to cover the home country of, say, the European Community plus Albania, Armenia, Azerbaijan, Bosnia and Herzegovina, Croatia, Georgia, Iceland, Liechtenstein, Macedonia, Moldova, Monaco, Montenegro, Norway, Serbia, Switzerland, Turkey and Ukraine.

For the sake of argument, if we were to file one design with seven reproductions and no deferment of publication it would cost CHF 1560 (approximately €1300/$1630) in official fees.

The inclusion of the European Community would not provide protection to any further territories within Europe but outside of the European Union with the exception, as far as I understand, of the Isle of Man. My understanding extends further to it not providing protection to Gibraltar, as I have previously blogged.

Nevertheless, the Isle of Man is covered by a registration in the United Kingdom. A registration in the United Kingdom is required to provide automatic protection to Gibraltar. It also provides protection to the Sovereign Base Areas of Akrotiri and Dhekelia (as I cannot see that design legislation was delegated to the Republic of Cyprus government). It is this same law, dating from when Cyprus was a British colony, that still appears to be in force to protect designs in the Turkish Republic of Northern Cyprus ("TRNC"). The TRNC, recognised only by Turkey, has not introduced design legislation of its own.

Obtaining a Registered Design in the United Kingdom, under the same criteria as the International filing above, would cost £60 in official fees (approximately €75/$95).

Such a UK Registered Design would need to be extended to the Channel Islands. Official fees here are £120 in Jersey (approximately €150/$190) and £100 in Guernsey (approximately €125/$155) plus an official fee of £22 (approximately €28/$35) each to the UK Designs Registry for the certified copies required to substantiate the applications locally.

Kosovo introduced a new designs law in 2011 with the assistance of OHIM. With official fees of €40 (approximately $50) it is also inexpensive.

The EU designation will cover Denmark, but a Danish national design registration is required to provide protection to the remote Faroe Islands. Denmark operates a deposit system for designs meaning they are registered quickly and efficiently. The basic fee is DKK 1200 (approximately €165/$205).

This means a significant part of Europe can be covered by six simple applications at a very reasonable cost (official fees of approximately €1911/$2395).

Many businesses will consider protection for Gibraltar, the TRNC and the British bases on Cyprus, the Channel Islands and Faroe Islands as unnecessary. The estimated combined population is little over half a million with over half of this figure made up of the TRNC's population, although this figure is disputed. Omitting filings to cover these territories will see official fees drop to approximately €1340/$1680).

You may have agent charges on top of the official fees and, with the probable exception of a Hague filing, agent fees will be more expensive than those charged by the Design Offices. I can speak for my firm and know we can provide very reasonable costs for coordinating the filings.

Further afield, the only remaining European states to have design legislation are Belarus, Kazakhstan and Russia. In these countries designs are more expensive due to higher official fees, agent charges and more vigorous examinations resulting in increased chances of objections. However, as the rest of the continent can be protected so inexpensively there can be room left in budgets to pursue registration in these three emerging markets that form a Customs Union.

D-d-d-d-designs

Despite a terrible reputation for its food, the United Kingdom has historically lead the way in many areas. In terms of intellectual property, it introduced the world's first trade mark registration system through enactment of the Trade Mark Registration Act 1875. However, design legislation pre-dates this - by some time - starting with the Designing & Printing of Linen Act 1787.

In fact, there was a branch of the UK Patent Office based in Salford (a city in walking distance from my office) purely for the receipt of textile designs. This area of the country was nicknamed 'Cottonopolis'.

During the 20th Century, I think it is fair to say that designs fell behind trademarks (and patents) in terms of prestige and perceived value. However, these reflections are being evaluated if not already revised.

Quotes from two branding professionals:

"Design is intelligence made visible", Alina Wheeler

"Design is an opportunity to continue telling the story, not just to sum everything up", Tate Linden

These quotes are, of course, not restricted to the intellectual property right definition of "design". However, design rights are now often seen as an increasingly critical piece of a brand owner's IP arsenal. They can provide an invaluable right given a registered design is not restricted to certain products in the same way as a trademark registration must be. The Locarno classification exists but not to pigeon hole in the same way as the Nice Classification for trade marks. There is "no principle of speciality".

However, the addition of Class 32 covering "graphic symbols and logos, surface patterns, ornamentation" to the Locarno classification in 2009 has made it easier for brand owners to protect the likes of logos through design registration.

Obtaining design protection is largely seen as a supplement to trade mark registration rather than an alternative.

SMEs are often more pressured on costs to rely on designs only - and new products are created and protected through registered designs whereas a verbal brand is not developed or a descriptive name is adopted. From an IP professional's perspective this may not be ideal but at least they are recognising that a form of intellectual property protection is useful.

With steps being taken by the UK and the International community to simplify and harmonise design legislation, the status of registered designs in IP's 'hierarchy' should continue to rise.

All is revealed: the newly applied for gTLDs

So yesterday was 'Reveal Day' when ICANN provided a list of new gTLDs applied for, sometimes referred to as .BRAND although they are not exclusively for trade marks.

There will be some of interest to legal entities with the applications for .INC, .LLP, .LTD, .GMBH, etc. which could enable them to register domain names beyond .COM.

Applications have been made for obviously desirable gTLDs: .APP, .GAME, .HOTEL, .MOVIE, .MUSIC, .TICKETS, the optimistic .LOVE and something I appear to order on the internet far too regularly: .PIZZA.

There are also geographic applications in which domain names will presumably be issued to applicants with a connection or residence. Such examples include from France, .ALSACE and .CORSICA and from South Africa, .CAPETOWN, .DURBAN, and a more familiar and easy to spell, .JOBURG. These applications seem to have been made on behalf of regional organisations and governments, although I spotted .CYMRU (this meaning Wales in Welsh) was applied for by Nominet, who administer the ccTLD for the United Kingdom.

When it comes to trade marks, it is no surprise that some of the world's biggest brand owners have applied so we see the likes of .MICROSOFT, but it is perhaps more interesting to see who has not applied.

Using Interbrand's top 25 brands (2011), there is no .GE or .HP as it appears two-letter gTLDs are not allowed but then there are no applications for .GENERALELECTRIC or .HEWLETTPACKARD either. H&M would have needed to spell out their ampersand (.HANDM) and there is no application here. There are also no applications for .DISNEY, .MERCEDES, .GILLETTE or .LOUISVUITTON and, arguably most suprisingly, for .COCACOLA or .COKE; .PEPSI is also not subject of an application. 

It is interesting how different brand owners have considered an application necessary or not. They were very expensive, but to massive brands still surely not out of their reach.

There could be a battle for .GUARDIAN which has been applied for by a British newspaper and American life insurance company.

L'Oréal have filed a number of applications. A number of these are for their brands but they have also decided to go for some generic words too: .BEAUTY, .HAIR, .MAKEUP, .SALON, .SKIN plus one in non-Latin characters.

In fact, generally speaking there have been many applications for gTLDs in non-Latin characters.

Finally, there is also an application for .WTF (used as a euphemism in English) and .SUCKS, which one can only anticipate would be highly controversial.

There are now seven months in which objections on various grounds can be filed with an appropriate Dispute Resolution Service Provider. For brand owners, the 'Legal Rights' avenue is likely to be of most interest and objections for these will be handled by our colleagues at WIPO. I wonder how many are going to be filed...

Madrid madness!

The Philippines accession was perhaps more surprising as Colombia joining the Madrid Protocol was anticipated. However, they have shocked us somewhat with the speed of their accession. As I understand it they were aiming for the end of the year with local practitioners more conservatively expecting an early 2013 joining date.

There is not much to add to WIPO's announcement. As they say, India, Mexico and New Zealand have made a number of internal measures meaning Madrid Protocol membership is on the horizon for them.

We must wait to see if this is the catalyst towards a more rapid increase in Madrid Protocol membership and, specifically for Latin America, if this will swim against the "pink tide".