Use of Roundel - possible TFL copyright infringement?

[Freezefire41]

Hi there, brand new here and hopefully someone out there could provide a little guidance to me please

I am designing a new logo for my London based not for profit sports club. I was hoping to upload a copy here but can send an example to anyone who can help. Our current logo is a circle with the name in a rectangle inside it across, and in the new version, I am looking to have the name on a single line. . To avoid the text being squashed I extended the rectangle out over the top of the circle. After I showed it to a friend, and they said "Oh, and it looks like the Underground which is a nice homage given we're London". This wasn't the initial intent but now seems like a consistent observation.

After reading, I know there are a lot of rules that TFL have for their Roundel and that they are quite active regarding their protection (thread here: viewtopic.php?p=6756&hilit=roundel&sid= ... 8e82#p6756).

Our logo would be black and white, and the Roundel shape is a different ratio to theirs with an image within the circle boundary (which contains text). It doesn't share the same colours or ratios but I'm wondering if using it on a kit/bags for the club is possible Copyright or Trademark Infringement? I'm wondering where the bounds of "rectangle on a circle" copyright end for TFL.

Any help much appreciated!

[AndyJ]

Hi Freezefire and welcome to the forum,

I don't think you need to worry about copyright. If TflL wanted to object then they would do so on the grounds of trade mark law. As you have read the other thread you will know that where there is similarity between a new sign or logo and a registered trade mark, two things are considered: whether the goods or services being sold or advertised under the 'new' mark are in the same class(s) as the registered mark, and if they are in different classes, whether the similarity is enough to cause confusion in the mind of a typical member of the public. There is also the tort of passing off, which they could fall back on if necessary.

Obviously your sports club and the services which TfL provide are dissimilar, but Tfl have registered at least two of their version of the roundel logo in class 18 which includes bags of various types, such as sports bags, shoulder bags and travel bags. This immediately means that they have a good chance of opposing your use of a similar logo on your sports bags, even if you weren't seeking to register your mark. As for the second issue, I think your friend has already answered that question. If the first thing he thought of when seeing your logo was TfL, that tends to indicate how a typical member of the public might react on seeing your logo.

As you know, TfL strong defend their intellectual property so I would expect them to challenge the club, if and when they became aware of your logo. Whether they would go as far as to take you to court over the issue is another matter. However if they did, you can be sure they would have some expensive lawyers to put their case and I would be unsurprised if they won. However I think that the more likely scenario is that once they became aware of your logo, you would receive a barrage of letters demanding that you cease and desist using the logo.

I hope this helps.

[Freezefire41]

Thank you very much! I think on balance that it's just not worth any possibility, so I'll go another route. Really appreciate your help here