01/07/2022
The end of June marks the return of one of the most important events in the sporting calendar and one of the most iconic tennis tournaments in the world: Wimbledon.
The All England Lawn Tennis Club (the “Club”) has owned multiple registered trade marks for the famous Wimbledon name and other prominent signs for some time. However, the dark green and purple colourway – which has been associated with the Wimbledon tennis tournament for over a Century – has only been protected as a registered trade mark in the UK since 2016.
Why is trade mark protection important for sports events?
Registered trade marks are commercially valuable assets which can act as a deterrent to potential infringers. The owner of a registered trade mark will have a monopoly right to prevent others using this trade mark, or a confusingly similar mark, for particular goods and services. This will provide the owner with the necessary tools to deter competitors from infringing their trade mark, which includes attempts to benefit from their established reputation. Therefore, trade mark protection in the sporting industry is crucial, given that branding is fundamental to many sports teams and events. For example, for the official sponsors of prominent sporting events such as the Wimbledon tennis tournament, who pay large sums to be associated with the celebrated name, it is essential that the Club has sufficient trade mark protection. This will reassure the sponsors that that their licenses with the tournament are protected, discouraging unauthorised ambush marketers.
Securing protection for the Club’s signature colours
The Club has always been proactive in their trade mark strategy, pursuing protection of marks for the purpose of protecting both consumers and for the Wimbledon tournament itself. The Club is the owner of many registered trade marks for both word and sign marks, including the word mark “Wimbledon” and the famous crossed-rackets logo. However, despite having used a dark green and purple colourway since 1909, the Club didn’t secure registered trade marks for this colourway until relatively recently. Therefore, for many years, the Club has faced numerous issues in relation to preventing the unauthorised third party use of their signature colours. Unauthorized ticket resale platforms have continuously attempted to pass themselves offas the official Wimbledon tournament. Many of these platforms have deliberately avoided using the Club’s registered trade marks, and have instead used the unregistered dark green and purple colourway on their websites in an attempt to deceive consumers or associate themselves with the official tournament.
If a trade mark has not been registered, owners of rights in such signs in the UK must rely on the common law tort of passing-off to enforce their rights against infringers. Passing-off actions are notoriously labour-intensive and costly, and require the owner to produce evidence of their mark’s goodwill and reputation in the UK, as well as show that the unauthorised use of this mark will, or is likely to, amount to a misrepresentation which is likely to cause damage to their goodwill or business. Therefore, for more than 100 years, the Club has been forced to rely on the tort of passing off to prevent third parties from using the historic colourway in a misleading way to take advantage of the Club’s goodwill and free ride on the coat tails of Wimbledon’s reputation. Securing a registered trade mark for this colourway was therefore crucial for the Club, as the registration of a trade mark would act as prima facie proof of the owner’s entitlement to the mark. In other words, the Club could rely on their registration for their colour combination to challenge infringers and avoid the cost and uncertainty of passing off actions.
Securing a colour trade mark is, however, only achieved in exceptional circumstances. Where rights in colour marks are registered, the monopolies granted by the Intellectual Property Office are limited in scope. For example, rights in colour marks are only granted for specific shades of a colour / colours. This is usually only achieved by providing extensive evidence proving that through continued use of the mark, the relevant public has come to associate the colour / colour combination in question with the party seeking to protect it.
Unsurprisingly, the Club needed to go to great lengths to secure a registration for their green and purple colourway trade marks, providing a detailed survey showing evidence that consumers associated these colours with the Wimbledon tournament, as well as collating a substantial amount of pictorial evidence dating back to the early 20th Century showing use of the green and purple colourway. Although the Club’s attempt to register this mark was initially unsuccessful, on the 24th June 2016, just over six years ago, the Club satisfied the UK Intellectual Property Office that the distinctive character of their dark green and purple colourway had been established through continuous use over a period of more than a Century, and 107 years after the mark was first used in the UK in connection with the Wimbledon tennis tournament, the distinctive colourway is finally protected as a registered trade mark.
UK Trade Mark Registration No. 03095405
Mark Description/Limitation
The mark is in the form of a stripe consisting of the colour green (Pantone No. 349 C) adjacent to the colour purple (Pantone No. 268 C). The two stripes are of equal proportions and the green stripe is on the left of the purple stripe when presented vertically.
UK Trade Mark Registration No. 03097108
Mark Description/Limitation
The mark is in the form of a horizontal stripe consisting of the colour green (Pantone No. 349 C) adjacent to the colour purple (Pantone No. 268 C). The two stripes are of equal proportions and the green stripe is above the purple stripe.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
