In a recent decision of the Trade Marks Office, Melbourne City Football Club Inc v MHFC Holdings Pty Ltd [2017] ATMO 99, a South Kingsville soccer team in division three of the Football Federation of Victoria State League, Melbourne City Football Club Inc ("the Opponent"), has successfully opposed a trade mark registration of A-League giants Melbourne City in the name of MHFC Holdings Pty Ltd ("the Applicant"). The decision marks the latest skirmish in the ongoing legal battle that makes David and Goliath look like an evenly weighted fight.

A tale of two Cities

The A-League side, Melbourne Heart, was purchased by UK mega-club Manchester City in January 2014 for $12 million, and immediately commenced a rebrand to Melbourne City. The rebrand hit a snag however in the form of a South Kingsville team which has played locally under the name Melbourne City since 1991. A fierce intellectual property battle between the mismatched parties began, with both teams seeking to register various domain names and trade marks regarding their shared team name.

This recent decision concerned the A-League side's trade mark application for registration of MELBOURNE CITY FOOTBALL CLUB in respect of a broad range of goods including for clothing, games, balls, shin guards and travel goods. During examination of the MELBOURNE CITY FOOTBALL CLUB trade mark, the goods claimed in the application were amended to limit each class of goods to "goods promoting or marketing or otherwise relating to or associated with or indicating a connection with the game or sport of football (soccer)", seemingly to overcome a potential objection based on an earlier trade mark registered for goods concerning AFL.

The Opponent, namely the division three side, opposed the registration of the MELBOURNE CITY FOOTBALL CLUB trade mark under various grounds of the Trade Marks Act 1995 (Cth), including that the MELBOURNE CITY FOOTBALL CLUB trade mark was not sufficiently distinctive to qualify for registration in relation to the goods claimed in the trade mark application as it was required by other traders.

The Applicant's MELBOURNE CITY FOOTBALL CLUB trade mark application for a range of sporting related services, all of which were restricted to promoting or marketing or otherwise relating to or associated with indicating a connection with football (soccer) services, had previously been refused on the basis that the trade mark was found to have no inherent adaptation to distinguish the services claimed in the application. Against that backdrop, the same Delegate was allocated to hear this Opposition concerning the Applicant's trade mark application for the goods.

Relevant principles of distinctiveness

The case was decided on the section 41 ground of opposition. Under this ground, an application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered from the goods or services of other persons.

When considering whether a trade mark is capable of distinguishing the applicant's goods or services from those of other traders, a trade mark is classified as either:

  • inherently adapted to distinguish, in which case it is capable of distinguishing the goods/services;
  • partially or to some extent inherently adapted to distinguish, in which case the applicant must show that the mark is, or will become, capable of distinguishing its goods/services from those of others through use or intended use, and having regard to other circumstances; or
  • not to any extent inherently adapted to distinguish, in which case distinctiveness must rest entirely on use.

Although MELBOURNE CITY FOOTBALL CLUB may well describe the services of being a football club, it was asserted by the Applicant that those words do not directly describe the range of goods claimed in the application, i.e. mobile phones, debit cards, waistcoats and rattles.

However the Delegate noted that whether a trade mark is directly descriptive is not the end of the matter, but observed that "there is a continuum of capacity of trade marks to distinguish".

The trade mark was partially inherently adapted to distinguish

The Delegate agreed with the Applicant that the words MELBOURNE CITY FOOTBALL CLUB did not directly describe the goods covered by the application, as the goods claimed in the application encompassed a broad range of products unrelated to the city of Melbourne or football.

However the fact that the goods claimed in the application were all limited to be in connection with or promoting soccer led the Delegate to conclude that the trade mark indicated the origin and nature of the goods. The Delegate also noted that the majority of the goods are "types of products that a soccer club might reasonably offer to customers for fundraising or promotional activities ancillary to the provision of its services". The Delegate was of the view that the ordinary signification was that the goods originate from a football club based in the city of Melbourne and that the other persons in the Melbourne football fraternity are likely to want to use the trade mark on or in relation to similar goods.

That said, the Delegate accepted that the trade mark was not completely lacking inherent adaptability to distinguish, but was to some extent capable of distinguishing the Applicant's goods from those of other traders.

Melbourne City was unable to show acquired distinctiveness through use

The Applicant was therefore required to show that the mark has, or will distinguish its goods from those of other traders. The Applicant had supplied voluminous evidence on this point, all of which came after the priority date of the trade mark of 16 January 2014, as the club had not rebranded until June 2014.

However, the majority of uses were as part of the club's logo, which was also registered as a trade mark:

The Delegate found that the fact that the trade mark appeared in close conjunction to the logo diluted the effect of such use, meaning that the phrase MELBOURNE CITY FOOTBALL CLUB alone was not performing the function of distinguishing the goods on which it appeared from those of other traders.

Further, the Delegate questioned whether the use of the trade mark on the player's shirts amounted to use in the course of trade, where the kits were only designed to be worn by players within the club.

The Applicant attempted to draw on the reputation of Manchester City in Australia to demonstrate that their use of the trade mark will grow in the future, however the Delegate found that MANCHESTER CITY was not substantially the same as MELBOURNE CITY, and therefore this use was not directly relevant in determining whether consumers associated the MELBOURNE CITY FOOTBALL CLUB trade mark with the Applicant. The Delegate noted that "[a]t most, an inference may be drawn that use of the trade mark is likely to increase in the future, but I am not convinced that such an inference is sufficient in the present case".

The Melbourne City trade mark registration was refused

The Delegate concluded that the Applicant had been unable to show that the trade mark was capable of distinguishing its goods.

The trade mark was therefore refused registration and costs were awarded against the A-League side.

Observations

  1. Sports teams and other similar organisations will most likely need to rely on evidence of use of their trade mark if they wish to trade mark a team name that is mostly descriptive, such as the name of their home city.
  2. Consistent with Trade Mark Office practice the decision demonstrates difficulties which may be encountered in demonstrating acquired distinctiveness through use, particularly where the mark is generally used in conjunction with another trade mark, or within a larger composite mark. In those circumstances, it is critical to also file evidence of use of the trade mark as applied for, in this case the words MELBOURNE CITY FOOTBALL CLUB, alone.
  3. The case also highlights the impact that may flow from narrowing or restricting goods and services in an application to overcome a prior trade mark. Here, the situation may have been different if the goods had not been restricted to marketing and promoting soccer.
  4. Both the A-League and third division Melbourne City teams have numerous other pending trade mark applications, which indicates that this legal battle may be far from over.