Football League Table

'Is it legal', 'can I do this' type questions and discussions.
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Keith
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Football League Table

Post by Keith »

Hi All
I need some advice please. I want to create a League table board using Football Team names only, for Example, Arsenal, Liverpool Manchester C, Manchester U, searching online is says that Football Team names cannot be used commercially.
So for example this Amazon product doesn't have permission to use the football team names but it is still for sale on Amazon.
Image
So my question is it possible to use Football Team names commercially or where is the best place to find out.
Thanks

Keith
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AndyJ
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Re: Football League Table

Post by AndyJ »

Hi Keith and welcome to the forum,

The use of footbal club names is a tricky area. Obviously we are all able to use the names of clubs, despite them being registered as trade marks, in ordinary conversation or correspondence, as in your question here on the forum. No one would think that that sort of use was in the course of trade, which is where the trade mark protection specifically applies. But the moment that you apply a club's name to a product which is then sold (eg a replica shirt) then the motivation of the seller becomes highly relevant, as does the perception of the potential buyer. There have been several high profile court cases (the most famous being Arsenal FC vs Reed), involving football clubs and people who offer merchandise built around the goodwill which the Clubs own and exercise through their branding strategy. It is the fact that the clubs are very active in protecting their intellectual property that makes your venture risky, rather than the extent of any actual legal risk itself.

As the Reed case itself highlighted, the difficulty arises where a trade mark is used by a third party in a descriptive manner which has not been authorised by the mark's owner. Mr Reed lost his case because the UK Court of Appeal found (taking into account the decision of the Court of Justice of the European Union) that the presence of the Arsenal FC name on the shirts which Matthew Reed was selling amounted to a false indication of the origin of the shirts, ie they were not shirts authorised by Arsenal FC, and therefore they infringed Arsenal's trade marks. It came down to the likely perception of the potential purchaser of the item concerned. Much the same could apply to football tables such as yours, although I suggest that the chance of confusion on the part of a potential customer is much less, since most football fans would be familiar with third party products like this.

Perhaps a better example which is closer to the facts of what you would like to do, is the case of the Football Association Premier League vs Panini UK Ltd. That case was about whether the club crests and logos on the players shirts (which were registered trade marks as well as being subject to copyright) that were visible in the collectible stckers produced by Panini were examples of incidental inclusion, in which case they woould not infringe copyright owned by the clubs. Incidental inclusion is the concept that, despite the fact that something is subject to copyright protection, if it has been included in another work such as a photograph, film or video, merely because it was present in the background when the image or shot was taken, and there was no deliberate intention to include it, the person responsible for creating the image, video etc avoids liability for primary infringement. While incidental inclusion is not expressly a feature of trade mark law, clearly some of the same principles arise when deciding if the use of the trade mark is 'in the course of trade'. Since multiple clubs are mentioned on the tables, it is obvious that no one individual club would be assumed to be the originator of the goods. It is possible that the Premier or other Leagues might be presumed to be responsible for producing the tables, perhaps collectively, but again, I think this is a bit of a stretch.

As for the status of the card you gave as an example, Fiesta Crafts Ltd are a bona fide UK registered company and so I assume that they have carried out due diligence before producing their tables and are satisfied that the tables do not infringe the intellectual property of either the named clubs or any of the Leagues mentioned on the card.
Advice or comment provided here is not and does not purport to be legal advice as defined by s.12 of Legal Services Act 2007
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