GrassPlanning disputes don’t often lead to the host of Match of the Day tweeting their outrage. However, the ongoing saga between Southwark Council and Meadow Residential LLP (“Meadow”), has drawn the ire of Gary Lineker and other prominent figures in the football world. At the centre of the dispute is non-league Dulwich Hamlets FC (“DHFC”).  Meadow purchased the land on which DHFC’s Champion Hill ground is built but have been denied planning permission to construct a residential development by Southwark Council.

Meadow has since taken a number of steps, which the leader of Southwark Council believes to be aimed at bringing the local authority back to the negotiating table. Lawyers for Greendales IP LLC (a subsidiary of Meadow) recently sent a letter to the club stating that Greendales was now the holder of registered trade marks in “Dulwich Hamlet Football Club”, “The Hamlet” and “DHFC” (the “Trade Marks”). Lawyers for Greendales went on to state that Greendales required that the Trade Marks “no longer be used on any printed literature and any online activity including websites and twitter”. Greendales also required confirmation that references to all Trade Marks “will be removed, failing which further action will be taken to protect [Greendales’] position.

The consequences of Greendales’ purported prohibition on the use of the Trade Marks by DHFC are more insidious than the simple deprivation of a right to use three trade marks. The name of a football club is much more than just a commercial brand to its supporters. Each club’s history, indeed its very identity, is inherently tied to its name. The names of clubs are inscribed on trophies and the record books denote every promotion, every relegation and every result by reference to clubs’ names. Fans of DHFC sing the club’s name from the terraces as they have since the club’s foundation in 1893. It is in this context that Greendales sought to register the Trade Marks.

Greendales applied to register the Trade Marks on 17 October 2017 and so the period for opposing registration, which is usually two months, has long since passed. However, all is not lost for DHFC. The club has a long history of using the Trade Marks which means it is likely to have extensive unregistered rights that predate Greendales’ registration of the Trade Marks. These unregistered rights could entitle DHFC to make an application to invalidate the Trade Marks. Moreover, it is possible that Greendales’ conduct in registering the Trade Marks could amount to bad faith within the meaning of the Trade Marks Act 1994. The EU Intellectual Property Office’s guidelines on bad faith indicate that it can be considered to mean dishonesty which would fall short of the standards of acceptable commercial behaviour. If the UK Intellectual Property Office considered Greendales’ conduct to amount to bad faith, it could apply to court for a declaration of invalidity in respect of the Trade Marks.

In addition to the steps that DHFC could take to try to invalidate the Trade Marks, DHFC may have a cause of action for unjustified threats under the Trade Marks Act 1994 if the club can show that its interests are adversely affected in a real way. If DHFC were to successfully bring an action for unjustified threats, its remedies could include a declaration that the threat is unjustified, an injunction against the continuance of the threat and/or damages in respect of any loss which it sustained.

Ultimately, the trade mark element of this story appears to have been resolved with Meadow confirming in a statement that it intended to transfer “with immediate effect the ownership of the [Trade Marks]” to the Dulwich Hamlets Supporters’ Trust (“DHST”), at no cost to the DHST. Meadow also stated that the applications for the Trade Marks were made “as part of discussions over a memorandum of understanding and ultimate handover to the DHST”. In a statement of its own, the DHST acknowledged that Meadow had dropped their attempt to stop DHFC using its own name but denied any suggestion by Meadow that DHST had any knowledge of the applications for the Trade Marks prior to the letter received by the club earlier this month. Despite the apparent resolution of the Trade Marks issue, the bigger question remains – who will emerge victorious in the battle for Champion Hill?