Lawyers & IP Professionals respond to the Disputed Marks

Discussion in 'Dulwich Hamlet FC' started by HELVETICVS, Mar 28, 2018.

  1. HELVETICVS

    HELVETICVS ILLE QVI PVLSAT SVM

    This is a series of posts which contain Solicitors', Barristers' and IP Practitioners' responses to Blake Morgan's advice to their Client, Greendale IP LLC, and its Applications for Registration of the Marks:

    Dulwich Hamlet Football Club
    DHFC
    The Hamlet
    collectively, the 'Disputed Marks'.

    7 March
    “A registration doesn’t necessarily trump earlier use”: takeaways from Dulwich Hamlet’s trademark dispute - Blog - World Trademark Review

    “A REGISTRATION DOESN’T NECESSARILY TRUMP EARLIER USE”
    Headline, World Trademark Review



    “The focus on use of the marks in printed literature suggests that the aim is to tackle criticism of Meadows, something backed up by a statement the company gave to The Independent”

    - Trevor Little, World Trademark Review



    “If silencing criticism was the aim, the effort has arguably failed”

    - Trevor Little, World Trademark Review



    “The mere fact that you are first to register a particular trademark does not necessarily mean it gives you the right to prevent third parties from using something that is the same or confusingly similar in circumstances where there are prior unregistered rights.”

    - Cerryg Jones, Partner at Browne Jacobson, in World Trademark Review



    “If a club has been involved in its football club-related activities for over 100 years, and someone else comes along and opportunistically registers the mark for football related activities, that doesn’t necessarily mean that they can prevent you from carrying on”

    - Cerryg Jones, Partner at Browne Jacobson, in World Trademark Review



    “…the fact that someone has registered a trademark does not necessarily trump someone that has been using that trademark earlier.”

    - Cerryg Jones, Partner at Browne Jacobson, in World Trademark Review



    “…it seems to me that the applications were arguably filed in bad faith because the club – rather than the ground – would be the natural owner of at least the trademarks relating to the name of the club”

    - Chris McLeod, partner and trademark attorney at Elkington and Fife, in World Trademark Review



    “As the owner of the ground is effectively threatening to sue the club, the logical response would be to threaten to counterclaim for a declaration of invalidity.”

    - Chris McLeod, partner and trademark attorney at Elkington and Fife, in World Trademark Review



    “Budgets are finite and for semi and non-professional clubs in particular…engaging lawyers to counter threats may be an unattractive expense. The club is unlikely to have deep pockets.”

    - Chris McLeod, partner and trademark attorney at Elkington and Fife, in World Trademark Review



    “Another interesting dimension to point out relates to the blowback that can occur for law firms when a letter they send goes viral.…the incident serves as a potent reminder that, when cease and desist letters go viral, it is not only the rights holder that can find itself under fire.”

    - Trevor Little, World Trademark Review




    7 March
    Dulwich Hamlet FC told to stop using trademarks



    “UK FOOTBALL CLUB TOLD TO STOP USING TRADEMARKS”
    Headline, World IP Review



    “DULWICH HAMLET FC TOLD TO STOP USING TRADEMARKS”
    Headline, World IP Review



    “A London-based football club have been told that they cannot use their own name or initials for trademark reasons.”

    - World IP Review




    7 March
    Top corporate law firm subject of social media storm after legal letter to football club surfaces online - Legal Cheek

    ““Top corporate law firm”?! Who said that!?”; respondent: “I wouldn’t even consider them a mid-market corporate law firm, I’m not trying to be rude but factual here.”

    - Comments, Legal Cheek



    “Appearing unhappy with the legal move, Dulwich Hamlet FC…tweeted the letter in full from its official account, and in turn created a major public relations headache for Blake Morgan.”

    - Thomas Connelly, Legal Cheek



    “Oh Blake Morgan this is not a good look... While this may have been technically correct you should have advised your client against this...”

    - James von Simson FCSI, Investment Director of Tilney Group, writing on the subject of the Cease & Desist letter in Legal Cheek



    “I had a relationship with a trainee from a Blake Morgan predecessor firm, he was (character wise) without doubt the biggest tool ever put on God’s earth.”

    - Comments, Legal Cheek
    [Blake Morgan LLP was formed as a merger of Morgan Cole (Oxford & Cardiff) and Blake Lapthorne (Portsmouth) in 2014]



    “See, these are the kind of greasy maneuvers that made me want to be a lawyer in the first place. This is the epitome of a commercial lawyer’s career; using legal mechanisms to protect and advance a client’s commercial interests.”

    - Sarcastic Commenter, Legal Cheek




    8 March
    Dulwich Hamlet’s trademark battle with landlord

    “DULWICH HAMLET’S TRADEMARK BATTLE WITH LANDLORD”
    Headline, The Trademark Lawyer Magazine



    “In a bizarre case this week, a non-league UK football team have been told they can no longer use their name or initials after their landlord applied to trademark them to prevent them from using it.”

    - The Trademark Lawyer Magazine



    “Dulwich Hamlet have been targeted by the landowner of their ground…[wanting] to build properties on the land instead. As they could not get them off the land any other way, the landlord has instead filed for IP Rights to shut the team down from a different angle, as they will no longer be able to use their own name.”

    - The Trademark Lawyer Magazine



    “Former England and Manchester United captain Rio Ferdinand is watching the situation with interest after his affordable housing group Legacy Foundation bid £10m to save the club just before Christmas. Ferdinand, a close friend of Dulwich manager Gavin Rose since childhood, wants Legacy to build affordable housing in compliance with Southwark’s requirements.”

    - The Trademark Lawyer Magazine
     
    Last edited: Mar 29, 2018
    salem, 3010 and Radical-Cliff like this.
  2. HELVETICVS

    HELVETICVS ILLE QVI PVLSAT SVM

    This is a series of posts which contain Solicitors', Barristers' and IP Practitioners' responses to Blake Morgan's advice to their Client, Greendale IP LLC, and its Applications for Registration of the Marks:

    Dulwich Hamlet Football Club
    DHFC
    The Hamlet
    collectively, the 'Disputed Marks'.

    9 March
    Blake Morgan and Deutsche turn to ADR to resolve bank's £8.4m negligence claim against firm [paywall]

    Blake Morgan and Deutsche turn to ADR to resolve bank's £8.4m negligence claim against firm [GoogleCache]

    “Blake Morgan, which ranked 50th in Legal Week‘s 2016-17 UK top 50, is also currently embroiled in a high-profile dispute over Dulwich Hamlet’s Champion Hill stadium.
    The club claims it is being forced out of the stadium by its owners, Meadow Partners. A letter from Blake Morgan on behalf of Greendales IP, a subsidiary of Meadow, stating that the ‘Dulwich Hamlet Football Club’ name has been trademarked, has gone viral on social media, attracting the attention of celebrities such as Gary Lineker and Danny Baker.”

    - Legal Week




    9 March
    facebook.com/story.php?story_fbid=1361749777305240&id=533304730149753&__tn__=-R

    “Could be you…act now”

    - Center for Intellectual Property Advocacy, Ghana




    9 March
    News

    “BLAKE MORGAN HELPS DASTARDLY DEVELOPER PINCH FOOTY CLUB'S NAME”
    Headline, RollOnFriday [news, views and gossip on the legal profession]



    “Blake Morgan helped a landlord secretly trademark all the names of a community football club which it wants to evict”

    - RollOnFriday, news, views and gossip on the legal profession



    “Blake Morgan revealed that last October it secretly registered 'Dulwich Hamlet Football Club', 'The Hamlet' and 'DHFC' as trademarks on behalf of its client, investment fund Meadow Residential. Blake Morgan told the club to stop using its own name.”

    - RollOnFriday, news, views and gossip on the legal profession



    “The move to cripple the club came four years after Meadow bought DHFC's ground for £5.7m with the intention of building over it. Its plans were scuppered when it lost a court battle with Southwark Council over its proposed £80m residential development.”

    - RollOnFriday, news, views and gossip on the legal profession



    “Fans including Danny Baker and Gary Linker have castigated Meadow for its mercenary approach, and Blake Morgan for agreeing to take part in underhand namenapping.”

    - RollOnFriday, news, views and gossip on the legal profession



    “A Hamlets fan who is a solicitor told RollOnFriday that Blake Morgan's tactic was "to make it impossible for the club to function" by registering all available IP. He said it was "more sinister", because although DHFC may have the grounds to overturn the registered marks based on existing goodwill, the landlord and Blake Morgan were "relying on the fact that they have no money to fight a claim, therefore the only purpose can really be to put the club out of business". ”

    - RollOnFriday, news, views and gossip on the legal profession



    “DHFC is known for being a forward-thinking club, fundraising for LGBT causes and holding charity games for Syrian refugees.”

    - RollOnFriday, news, views and gossip on the legal profession



    “RollOnFriday’s solicitor source said, "Had I been the lawyer receiving that instruction I think within 5 minutes I’d have realised the dubious motives and potential for huge amounts of negative publicity weren’t worth the few £k they got for the work – a pretty silly instruction to take".”

    - RollOnFriday, news, views and gossip on the legal profession



    “The backlash appears to have been so severe that Blake Morgan has removed from its website the profile of the partner whose email address was given on its widely-circulated correspondence with the club. ”

    - RollOnFriday, news, views and gossip on the legal profession



    “These are pretty cut-and-dried bad faith registrations, aren't they? ”

    - Comments, RollOnFriday [news, views and gossip on the legal profession]



    “An application for a declaration of Invalidity can be made by anybody, including the Trade Mark Registrar (s47(3)), so it's entirely possible that the UKIPO might take action itself to sort out this one or that any aggrieved fans can get on with making an application. And the effect of Invalidity is that the TM is treated as never having been registered at all.”

    - Comments, RollOnFriday [news, views and gossip on the legal profession]



    “This is not just grubby but stupid behalf of both Blake Morgan and their client.”

    - Comments, RollOnFriday [news, views and gossip on the legal profession]



    “Given the huge amounts of outrage on this one DHFC should easily be able to Crowdfund a legal response and if they do it looks to me to be a slam-dunk.”

    - Comments, RollOnFriday [news, views and gossip on the legal profession]



    “I would contribute to a Crowdfunding initiative and time towards any legal challenge, although I am not an IP specialist. I am however an in-house lawyer and Blake Morgan will receive no more Instructions from me. I would be embarrassed to have them fighting my corner!”

    - Comments, RollOnFriday [news, views and gossip on the legal profession]



    “Very silly Instruction - gives the whole industry a bad name.”

    - Comments, RollOnFriday [news, views and gossip on the legal profession]



    “Blake Morgan are making out like this was a one off Instruction for which they got a few £k, but if you look at the Planning Documents you can see they have actually been leading on this since 2016.”

    - Comments, RollOnFriday [news, views and gossip on the legal profession]



    “Meadow's only in house lawyer is an ex-Blake Morgan guy who I suspect gives them a lot of work.”

    - Comments, RollOnFriday [news, views and gossip on the legal profession]



    “Can't be easy to pay for their swanky new offices on regional rates, either.”

    - Comments, RollOnFriday [news, views and gossip on the legal profession]



    “Blake Morgan are sailing pretty close to the wind here. I think a well placed complaint to the SRA might be in order.”

    - Comments, RollOnFriday [news, views and gossip on the legal profession]



    “They would undoubtedly have had knowledge that the applications were being made in bad faith, as reasonable searches would have been conducted prior to the application, and even less then average due dilligence (such as a simple internal conflict check on the Instruction...) would have turned up the existing Parties' rights.”

    - Comments, RollOnFriday [news, views and gossip on the legal profession]



    “I agree an SRA complaint is in order, this is cut and dry a breach of the Code of Conduct and Outcomes.”

    - Comments, RollOnFriday [news, views and gossip on the legal profession]



    “SRA complaint already formally made yesterday but the more the merrier - if they get a few then I assume the attention they give the matter will increase.”

    - Comments, RollOnFriday [news, views and gossip on the legal profession]



    “Never kid a kidder.”

    - Comments, RollOnFriday [news, views and gossip on the legal profession], referring to Daniel Kidd - the Blake Morgan Property Lawyer & Partner that sent the Trade Mark Infringement Notice



    “I would have refused those Trade Mark Instructions. I have told clients fairly often not to register competitors' trade marks when they raise it and it's clearly pointless and spurious and will just court trouble. Also most of us after at least a few years doing this tend to say how we think something might look, never mind the law. Surely they must have realised the adverse PR for their client and their firm which was likely to flow from this?”

    - Comments, RollOnFriday [news, views and gossip on the legal profession]



    “To say that this incident has damaged the reputation of Solicitors would be to grossly understate the situation.”

    - Comments, RollOnFriday [news, views and gossip on the legal profession]



    “In March 2015, the SRA stated, “Although solicitors must fearlessly advance their clients' cases, they are not "hired guns" whose only duty is to their client. They also owe duties to the courts, third parties and to the public interest. Breach of those duties can give rise, for example, to wasted costs orders or to findings of misconduct.”
    It will be interesting to see if the SRA will take note of the actions of the hired gun in this case. And I would add that young solicitors starting out on their careers should take heed.”

    - Comments, RollOnFriday [news, views and gossip on the legal profession]



    “The dangers of dabbling. The letter was written by a Property lawyer not a a Trade Mark lawyer.”

    - Comments, RollOnFriday [news, views and gossip on the legal profession]



    “Blake Morgan are now blacklisted at my work.”

    - Comments, RollOnFriday [news, views and gossip on the legal profession]
     
    Last edited: Mar 29, 2018
    salem and Radical-Cliff like this.
  3. HELVETICVS

    HELVETICVS ILLE QVI PVLSAT SVM

    This is a series of posts which contain Solicitors', Barristers' and IP Practitioners' responses to Blake Morgan's advice to their Client, Greendale IP LLC, and its Applications for Registration of the Marks:

    Dulwich Hamlet Football Club
    DHFC
    The Hamlet
    collectively, the 'Disputed Marks'.

    9 March
    Non-league football club told to stop using their name and initials

    “NON-LEAGUE FOOTBALL CLUB TOLD TO STOP USING THEIR NAME AND INITIALS”
    Headline,
    - Matthew Siddaway, Waterfront Solicitors LLP



    “Searches on the UK Intellectual Property Office (‘UK IPO’) website indicate that on 17 October 2017 Greendale’s legal representatives filed applications to register “Dulwich Hamlet Football Club”, “DHFC”, “The Hamlet” as UK trade marks in, amongst other things, class 41 for “sporting and cultural activities”.

    These marks have now obtained registered status, prompting a cease and desist letter to be sent to the club asking that the marks no longer be used.”

    - Matthew Siddaway, Waterfront Solicitors LLP



    “The mere fact that Greendale has obtained first registration of the marks is not definitive. Indeed, DHFC was founded in 1893. It is therefore very likely to possess unregistered rights in the marks in relation to relevant goods and/or services.”

    - Matthew Siddaway, Waterfront Solicitors LLP



    “Unregistered rights will pre-date Greendale’s registrations and could be relied upon to seek to invalidate the marks.”

    - Matthew Siddaway, Waterfront Solicitors LLP



    “It seems likely that there are credible arguments of bad faith here.”

    - Matthew Siddaway, Waterfront Solicitors LLP



    “If it can be proved that the marks were applied for dishonestly or as an abuse of the trade mark system, then this is an alternative ground of invalidity which could be relied upon.”

    - Matthew Siddaway, Waterfront Solicitors LLP



    “…depending on the way in which Greendale’ claims have been termed in correspondence, DHFC could themselves be afforded a claim for unjustified threats of trade mark infringement. Such a claim will be available to an aggrieved party in certain circumstances where infringement proceedings have been threatened without foundation.”

    - Matthew Siddaway, Waterfront Solicitors LLP



    “Given the above considerations it seems unlikely that Greendale’s trade mark claims will be advanced any further. Nonetheless, the trade marks will remain on the UK IPO’s register until they are invalidated causing nuisance to a football club with a 125 year-old history.”

    - Matthew Siddaway, Waterfront Solicitors LLP





    12 March
    Football Ground Owner Scores Own Goal (via Passle)

    "FOOTBALL GROUND OWNER SCORES OWN GOAL"
    Headline,
    - Oliver Gray & Clare Mann, Partner, Dehns LLP



    “Greendales’ decision to register the trade marks DULWICH HAMLET FOOTBALL CLUB, The Hamlet, and DHFC and then attempt to enforce those registrations against Dulwich Hamlet Football Club was perhaps a little short-sighted, given that a UK trade mark registration can be cancelled if it is found to have been filed in bad faith.”

    - Oliver Gray & Clare Mann, Partner, Dehns LLP



    “DHFC could apply to cancel Greendales’ registrations if it could show that the filing of the applications was action which “[fell] short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular area being examined” [Gromax Plasticulture Ltd v Don & Low Nonwovens Ltd].”

    - Oliver Gray & Clare Mann, Partner, Dehns LLP



    THIS : PARTICULARLY THIS : ESPECIALLY THIS :
    “The UK Trade Mark Application form specifically includes a declaration that the “Trade Mark is being used by the Applicant…in relation to the goods or services shown, or there is a bona fide intention that it will be used in this way”. The making of this declaration is effectively an assertion by the Applicant that it is the rightful Owner of the Trade Mark and is entitled to use it.”

    - Oliver Gray & Clare Mann, Partner, Dehns LLP



    “In the present case, Greendales is a company related to the owner of the football ground rather than to the football club itself. Surely, the football club is the rightful owner of its own name.”

    - Oliver Gray & Clare Mann, Partner, Dehns LLP



    “Dulwich Hamlet Football Club has been using its name since 1893, so will have acquired unregistered (common law) rights in it, as well as in the longstanding nickname ‘The Hamlet’ and the acronym DHFC.”

    - Oliver Gray & Clare Mann, Partner, Dehns LLP



    “Significantly, unregistered rights are also identified in the UK Trade Marks Act as a defence to infringement – “A registered trade mark is not infringed by the use in the course of trade in a particular locality of an earlier right which applies only in that locality” [Section 11(3) TMA].”

    - Oliver Gray & Clare Mann, Partner, Dehns LLP



    “Dulwich Hamlet Football Club may have recourse to a number of defences and means of counter-attack, but significant legal costs would be inevitable should such action be required.”

    - Oliver Gray & Clare Mann, Partner, Dehns LLP



    “A takeaway message for lawyers is that in this age of social media, any letter they send may end up in the (very) public domain. The widespread backlash against Greendales’ actions has not only been directed at Greendales; their lawyers have also found themselves in the middle of a PR nightmare.”

    - Oliver Gray & Clare Mann, Partner, Dehns LLP
     
    Last edited: Mar 29, 2018
    salem and Radical-Cliff like this.
  4. HELVETICVS

    HELVETICVS ILLE QVI PVLSAT SVM

    This is a series of posts which contain Solicitors', Barristers' and IP Practitioners' responses to Blake Morgan's advice to their Client, Greendale IP LLC, and its Applications for Registration of the Marks:

    Dulwich Hamlet Football Club
    DHFC
    The Hamlet
    collectively, the 'Disputed Marks'.

    13 March
    Firm in trade mark row with embattled football club

    “Television presenters Gary Lineker and Danny Baker were among those to publicly criticise the firm over the letter. The club has now appealed through Twitter for legal support to fight the claim.”

    - Max Walters, The Law Society Gazette



    “Question. It is plain that Dulwich Hamlet have prior use in the trademark, they've been going for a century. And doubtless Blake Morgan and their clients know that and are doing this out of pure malice to further a dispute.
    Is that really doing their job? Is that really ethical? Is that being a good officer of the court?”

    - Comments, The Law Society Gazette



    “it's up to Blake Morgan what advice to give and which instructions to accept. They've misjudged this. It's a PR disaster for them and a warning for all firms to think hard about the clients they want to work for and the kind of work they want to do.
    A business I admire very much has an internal motto: 'DDWT' (Don't Deal With T*ssers) and I commend that approach to anyone in any business.”

    - Comments, The Law Society Gazette



    “Law firms should choose their work, choose their clients and be prepared to say 'no thanks'. Especially if they make a big fuss on their websites about their firm's ethics, Corporate Social Responsibility and so on.”

    - Comments, The Law Society Gazette



    “Blake Morgan haven't simply done this off their own back - they will have advised their clients properly of all options available to them based upon what their client wants. Part of that advice will likely have been that the trademarks had not been registered by any other entity. They may have advised against doing anything with that knowledge (but I cannot be certain of course).”

    - Comments, The Law Society Gazette



    “This is sailing very close to the wind. Given the prior rights position what is the purpose of the registration? What happened to acting with integrity?”

    - Comments, The Law Society Gazette



    “Isn't there also a SRA Guide to Ethics in litigation which takes a pretty dim view of these types of activities? I do hope there is no suggestion of: capitulate and we will hand over the trade marks. That would get everyone into all sorts of trouble.”

    - Comments, The Law Society Gazette

    to be read in conjunction with the following Reader's Comment :​

    “There are professional conduct provisions about this sort of thing and lawyers have been struck off for this sort of thing in the past.”

    - Comments, The Law Society Gazette



    “Even a trainee would know that DHFC would have an unassailable defence. The correct response to the instructions would be to advise the client that the registrations are in bad faith and will be revoked if challenged and, because there is no basis whatever for the allegation, a letter cannot be written to a lay party for professional conduct reasons.”

    - Comments, The Law Society Gazette



    “What's actually happened is that the firm has just done whatever the client ordered it to do and was to afraid to say no for fear of losing it. That, in my book, makes this suitable for an investigation by the powers that be.”

    - Comments, The Law Society Gazette



    “To register the name of a business which is not yours as a trademark seems likely to be passing off, and would be a ground for refusal or revocation of a Trade Mark. To then threaten the true business is breathtaking, and must surely merit further action.”

    - Ian Newbery, The Law Society Gazette



    “Not my area, but even post Intellectual Property (Unjustified Threats) Act 2017, I'm wondering whether this might be an Actionable Threat.”

    - Comments, The Law Society Gazette




    13 March
    To register, or not to register: that is the question (for The Hamlet) | Leathes Prior

    “It would appear that the registration of the marks by Greendales has all the hallmarks of an application that was made in bad faith. Bad faith arguments have succeeded where it has been shown that the applicant has no intention to use the mark itself, or if the application was only submitted with the aim of preventing another business’s use of the trade mark.”

    - Richard Turner, Leathes Prior Solicitors



    “With the ongoing dispute between Dulwich Hamlet and Meadow Residential, of which Greendales is a subsidiary, it would appear to be very difficult for Greendales to suggest that these marks were registered for any reason other than to cause harm to Dulwich.”

    - Richard Turner, Leathes Prior Solicitors



    “DHFC may be able to rely on the long-standing defence that there is no infringement of a registered trade mark where the defendant is using its own name or address. This extends to company and business names. Clearly the Club has been using its name for over 100 years and it is unlikely that any action by Greendales could prevent this.”

    - Richard Turner, Leathes Prior Solicitors



    “A trade mark can be a valuable asset, not only for big businesses, but for charities, clubs and other organisations. Once registered the owner of the mark obtains powerful rights over the use of that mark. ”

    - Richard Turner, Leathes Prior Solicitors



    “DHFC is likely to be able to rely on the arguments of bad faith or own name however newer businesses and organisations could have more difficulty in raising such arguments”

    - Richard Turner, Leathes Prior Solicitors



    “The [Cease & Desist] letter was tweeted by the DHFC and quickly picked up a great deal of criticism and traction on social media, even forcing the solicitors of Greendales to make a formal statement regarding their role in the affair.”

    - Richard Turner, Leathes Prior Solicitors
     
    Last edited: Mar 29, 2018
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  5. HELVETICVS

    HELVETICVS ILLE QVI PVLSAT SVM

    This is a series of posts which contain Solicitors', Barristers' and IP Practitioners' responses to Blake Morgan's advice to their Client, Greendale IP LLC, and its Applications for Registration of the Marks:

    Dulwich Hamlet Football Club
    DHFC
    The Hamlet
    collectively, the 'Disputed Marks'.

    14 March
    Red card, ref! Prior rights and bad faith as defences to trade mark claims

    “RED CARD, REF! PRIOR RIGHTS AND BAD FAITH AS DEFENCES TO TRADE MARK CLAIMS”
    Headline, Laytons LLP



    “Dulwich Hamlet Football Club is fighting a battle to continue to play football at its Champion Hill ground, but it cannot have expected to face a fight to use its 125-year-old name.”

    - Russell Beard, Partner at Laytons LLP



    “DHFC’s impressively large and vocal crowds sing, “no-one knows us, we don’t care!”, but a remarkable trade mark dispute and the ensuing uproar on social media may have landed it on the map.”

    - Russell Beard, Partner at Laytons LLP



    “The dispute hit a new low when lawyers acting for a company associated with Meadow wrote a letter asserting trade mark rights in the names DULWICH HAMLET FOOTBALL CLUB, THE HAMLET and DHFC, insisted that the club should no longer use its 125-year-old name, its nickname or its initials or face “further action”. The applications for the trade marks in question were made in October 2017, a small matter of 124 years after the formation of the club.”

    - Russell Beard, Partner at Laytons LLP



    “The seemingly very cynical move to register and assert trade mark rights, presumably to place additional pressure on the club in the context of the battle over redevelopment of the land, has proved to be a clear own goal for the landowner and the lawyers involved.”

    - Russell Beard, Partner at Laytons LLP



    “The club has used its name since 1893; presumably, it has also used its nickname, “The Hamlet”, and its initials, “DHFC”, for quite some time. Whilst it seems it has not opted to register those names as Trade Marks, it is very likely to have acquired unregistered rights in those names.”

    - Russell Beard, Partner at Laytons LLP



    “significantly, a Trade Mark registered in bad faith is liable to be declared Invalid. Bad faith has moral overtones and encompasses not only dishonesty, but also dealings which fall short of objectively assessed standards of acceptable commercial behaviour.”

    - Russell Beard, Partner at Laytons LLP



    “From the outside looking in, and even without the benefit of the full facts, it seems difficult to discern good faith motives in this case.”

    - Russell Beard, Partner at Laytons LLP



    “Meadow and its lawyers have both faced the wrath not only of the club’s fans, but also the wider social media sphere. It is difficult to lay any blame at the door of lawyers fulfilling their client’s instructions, but angry fans have rushed to give the law firm 1 star Google reviews. Could it have been handled differently?”

    - Russell Beard, Partner at Laytons LLP



    “Some brand owners are, very cleverly, getting more creative and seeing a more congenial approach to handling lower level infringement as a means to generate positive social media responses. Two recent examples include Netflix’s request to an unauthorised Stranger Things themed pop-up bar not to continue after the end of its run, littered with puns and references to the series, and Budweiser sending a town crier to read a medieval style scroll to a craft beer company riffing on Budweiser’s “Dilly Dilly” slogan. The use of trade mark enforcement as marketing opportunity stands in stark contrast to the seemingly clumsy approach of Meadow.”

    - Russell Beard, Partner at Laytons LLP



    “It looks like the score reads Dulwich Hamlet 1: Overzealous landlord 0.”

    - Russell Beard, Partner at Laytons LLP





    26 March
    Red card - Intellectual Property Magazine [paywall]

    “RED CARD”
    Headline, Intellectual Property Magazine



    “Dulwich Hamlet Football Club, forced out of its home ground by its landlord, also found itself in a trademark dispute and was told to stop using its own name.”

    - Claire Lehr of EIP, Intellectual Property Magazine





    26 March
    Not a fan

    “NOT A FAN”
    Headline, The Law Society Gazette



    “Southern England firm Blake Morgan may have hoped that the attention it garnered through its letter to embattled football club Dulwich Hamlet over the use of the club’s name would be short-lived. Not so.”

    - Obiter Column, The Law Society Gazette



    “A tweet from a fan this week showed supporters holding aloft a (if Obiter may be so bold as to say so) rather well-designed flag bearing a large photo of Blake Morgan partner Daniel Kidd.
    The flag quotes a blog from last year in which Kidd included the quote: ‘If you can’t be a shining example, at least be a horrible warning.’
    Obiter is not sure what cryptic message fans are sending the firm but it’s safe to assume it’s not an invitation to an expenses-paid match-day experience.”

    - Obiter Column, The Law Society Gazette
     
    Last edited: Mar 29, 2018
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  6. editor

    editor hiraethified

    Well, that's more than enough for me getting on with!
     
    HELVETICVS likes this.
  7. HELVETICVS

    HELVETICVS ILLE QVI PVLSAT SVM

    Yes, editor - sorry, but I didn't want to discriminate amongst them because I think they all have their merits and each in their own particular way. Some people make legal points, which are valid, others make personal points, which are cutting.

    Besides which, you have your own style of writing [noice, BTW] and I find it's often better to allow the author a more free way of entreating the subject.

    I'll pick out my particular favourites and add them to this thread in due course. Busy day today though, so it'll appear in due course when I have the opportunity.
     
    Radical-Cliff and editor like this.
  8. editor

    editor hiraethified

    If you could fine tune them down to the ones that are the most succinct damning that would be great.

    Possible title: Blake Morgan and Dulwich Hamlet: legal professionals attack their 'cynical' attempt at a trademark grab
     
  9. HELVETICVS

    HELVETICVS ILLE QVI PVLSAT SVM

    Will do.

    On the subject of the title - I am not a writer, I am a waffler and arguer of technical points.
    I lack the punchiness and will leave the artistic stuff to your good self.

    For example, I could have just replied with the first two words of this post...
    :D
     
  10. editor

    editor hiraethified

  11. HELVETICVS

    HELVETICVS ILLE QVI PVLSAT SVM

    Right, I've tried a couple of times.
    I'm useless at this. I'm like the Editorial equivalent of a Junior School Sports Day.

    They're all equally valid points.
    Have a star, a medal and a trophy.

    What I'll do is go back and underline those bylines of the points I most like [winners of a star AND a medal].
    Those which are both underlined and italicised are the best, but by no means the only best ones [a star, a medal AND a trophy].

    And I still feel for those other ones.
    My poor, poor, wee bairns.

    I'd suggest that, when quoting a Commenter, that the byline of ascription should be e.g. "a Law Society Gazette Reader", &c.
     
  12. HELVETICVS

    HELVETICVS ILLE QVI PVLSAT SVM

    Bump on Post #1 for you, editor, in case you haven't seen it.

    Soz, I reckon that's the best I can do in whittling down.
    There's just so much evisceration from which to choose...
    :D
     
  13. Son of Roy

    Son of Roy Thinks Gavin Rose is great

    By the way have the Supporters Trust been given the Dulwich Hamlet trademarks by Meadow yet?
     
    iamwithnail likes this.
  14. Dulwich Mishi

    Dulwich Mishi Old Skool Terrace Dinosaur-embracing the new-veau!

    Surely the Football Club itself should be given them, now that the Club is back in control of its own affairs?
     
    Pink Panther and Nivag like this.
  15. DHST

    DHST Well-Known Member

    Hamlet Pete, salem, YTC and 1 other person like this.
  16. Griff_Turnstile

    Griff_Turnstile Agenda confused turnstile operator

    The answer is YES... On 15th Feb this year. You can check that out on the Intellectual Property Office website but bet someone posts a link to that before I finish typing.

    See above!
     
    Hamlet Pete and editor like this.
  17. YTC

    YTC Human Man

    As DHST said, yes! This was confirmed at one of our open meetings also I believe.
     
    Hamlet Pete likes this.

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