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Tottenham Hotspur 1-0 Fleet Spurs

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Tottenham Hotspur have forced non-league football club Fleet Spurs to change the design of their badge after Tottenham threatened Fleet with trade mark infringement proceedings because the badge is too similar to theirs.

Tottenham Hotspurs

Fleet Spurs were formed in 1948 in homage to Tottenham Hotspur and currently sit 15th in Wessex League First Division, the 10th tier of English Football.

Fleet recently held a competition for a fan to design the new club badge.  The winning entry incorporated a cockerel almost identical to that in the Tottenham badge.  Consequently, Tottenham requested that Fleet cease to use the badge on the basis that a lack of action may undermine their ability to stop other unauthorised people such as counterfeiters from using the club's logo for commercial purposes.  This is despite the Hampshire club having always incorporated a cockerel into their badge.

The cockerel in the Fleet badge is similar to that of the Tottenham badge but for the addition of claws and the ball being placed in front rather than below the cockerel.  The remainder of the Fleet badge bears a resemblance to the Paris St. Germain club crest. 

Trade mark infringement occurs where a registered mark is used in the course of trade without the proprietor's consent, where the sign used by the infringer is identical or similar to the registered mark for identical or similar goods or services and their exists a likelihood of confusion on the part of the public. 

There will also be a claim for passing off where a mark has goodwill or reputation attached to the relevant goods or services, and there is misrepresentation by the defendant to the public (whether intentional or not) leading, or likely to lead, the public to believe that the goods or services offered by him are the goods or services of the claimant, causing damage to the claimant.

Whilst the Fleets Spurs badge would appear a prima facie infringement, case law may support the assertion that it is not. 

In the Lotus case, infringement proceedings were brought by sports car manufacturer Lotus Group (sponsor of the Lotus Renault GP team) against the Team Lotus Formula One racing team.  Both parties were participating in Formula One under the Lotus name.  The High Court found that each side owned separate goodwill in the Lotus name and there was no realistic likelihood of confusion because although both team names contained the word Lotus, it was common practice for different teams to use the same brand name in this way.  In particular, commentators and spectators had no difficultly in differentiating between the two teams.  Further, the judge held that even if the Claimant had owned all the goodwill in the Lotus name, there would be no confusion based on the same reasons.

Fleet have developed goodwill through use of the Spurs name and a cockerel logo of some sort for many years, and fans would quite clearly recognise that the Fleet Spurs badge was not that of Tottenham Hotspur (particularly given the additional elements comprising the Fleet badge).  Therefore, it could be argued that there is no likelihood of confusion giving rise to trade mark infringement.

However, whilst many football badges contain similar elements, in this instance Fleet Spurs have used an almost identical cockerel, which is the dominant and highly distinctive element of both marks.  On this basis, a claim for trade mark infringement by Tottenham would likely succeed.

In light of this, Fleet has admitted that the winning fan had most likely based their design on the Tottenham badge but felt Tottenham had been heavy handed in dealing with the issue.  However, given the commercial revenues related to the Tottenham Hotspur brand (their merchandising income was £9.2m in 2012), it is no surprise that they took such steps to preserve their position in respect of these rights.  This highlights the importance of brands drawing the line in respect of use of their trade marks in order to protect their commercial interests.

Fleet has removed the logo from its website and will now have to take down any signs from around the stadium.  They will, however, be allowed to use their current kit until the end of the season.

Should Fleet want to continue to use the new logo or something similar, their best course of action may be to enter into a licence with Tottenham to use their crest.  This may be a course of action Tottenham would consider in order to repair some of the reputation lost in pursuing a grass-roots club with limited funds.

 

Leighton Cassidy is a Partner and James Hill is a Trainee Solicitor in the Trade Mark and Brand Protection group at Field Fisher Waterhouse LLP.