Made in Chelsea

Following on from the issue of the rights in the JOSE MOURINHO trade mark last season ( here), Chelsea FC are back in the headlines. This time Chelsea are using their latest trade marks for the word CHELSEA (granted at the end of last season and covering various clothing items) to prevent the sale of unofficial merchandise outside its ground. Chelsea allowed unofficial sellers a sell-through period, with any sellers still continuing to trade now facing the prospect of trade mark infringement proceedings. Although Chelsea already own various trade marks containing the “Chelsea” element, these latest registrations are a reminder of how powerful a registration for a simple word mark can be; word marks can cover different typographic representations of the text, as well as giving the registered proprietor a chance to pursue a claim against a mark which contains the word e.g. “Chelsea Blues”. The case also serves as a reminder that the courts give short shrift to sellers arguing that merchandise is simply a badge of allegiance or loyalty (see Arsenal v Reed), and will consider the use of a club’s name to constitute trade mark use and, potentially, trade mark infringement. The CJEU’s recent preliminary ruling (Tommy Hilfiger Case C-494/15) that operators of physical marketplaces may also be compelled to stop market-trader infringements provides further reason for brand owners to feel confident in enforcing their IP rights. Whilst the football season may still be in its early stages, the legal rights position for brand owners is already well under way. Stobbs advise a range of sports clubs on a full range of intellectual property strategies from trade mark registration through to brand licensing and commercial transactions. If you would like to seek advice on any of the issues raised here, please drop us a line.

Would you like to read more articles like this?