Tottenham Hotspur’s bid to move from Tottenham to the new Olympic Park has been raising eyebrows recently. David Lammy, MP for Tottenham and former Minister for Intellectual Property, has threatened to take legal action if the club take their name with them when they move. It is argued it would be misleading and deceptive if they continue using the registered trade mark “Tottenham Hotspur” once they have moved. This raises an interesting question: what happens when a trade mark owner decides to change the location of their business, when their registered trade mark is inextricably linked with their geography?
Successful registration does not guarantee the indefinite protection of a trade mark. Aside from expiry, there are two important ways in which a mark might be removed from the registers: invalidation, and revocation. One of the grounds for revocation is, as argued by Lammy, that the use of the trade mark is liable to mislead the public, but when does the use of a trade mark become misleading? Can a trade mark become misleading where its owner alters the geographical location of their business in such a way that the mark, formerly suggestive of origin, leads consumers to make an incorrect assumption about where goods or services come from? Of course it can, but not in all cases. A trade mark owner should be entitled to move their business around, but at the same time the law should protect consumers from being mislead about where goods and services come from.
The question here is whether the move of Tottenham Hotspur to the Olympic Park will indeed mislead the public. In this regard it should be considered to what extent the public rely on Tottenham in the club’s name as a geographical indication. The name certainly shouldn’t be taken to suggest that the players are Tottenham born and bred, given that the team includes stars from Brazil, Russia and Ireland. Nor does the name of a football club tell you where the majority of the fanbase is located – Manchester Utd being the obvious example. In this case, it might be argued that the public expect the name of the team to tell them the location of the club’s home ground, but on the other hand, could the name not be seen as simply characteristic of the club’s history? If the players, management and fans of a club are not bound geographically, then does it matter that a club’s home ground isn’t where it was when the club was founded? What are your thoughts?
Football fanaticism aside, a takeaway point for businesses here is that successfully registering their trade mark is not necessarily the end of the battle. Third parties can apply for revocation on a number of grounds, and trade mark owners should give some thought to the way their marks are used, where relevant including provisions in licensing agreements to ensure that licensees don’t use their mark in a misleading manner, which might jeopardize its registration.