The end of June marked the return of one of the most important events in the sporting calendar and one of the most iconic tennis tournaments in the world: Wimbledon.
The All England Lawn Tennis Club (the “Club”) has owned multiple registered trademarks for the Wimbledon name and other prominent signs for some time. Trademark protection in sport is crucial, given that branding is fundamental to many sports teams and events. For the official sponsors of Wimbledon tennis tournament who pay large sums to be associated with the celebrated name, it is essential that the Club has sufficient trademark protection. This will reassure the sponsors that that their licenses with the tournament are protected, discouraging unauthorized ambush marketers.
The Club has always pursued protection of marks for the purpose of protecting both consumers and for the tournament. The Club is the owner of many registered trademarks for both word and sign marks, including the word mark “Wimbledon” and the famous crossed-rackets logo. However, despite having used a dark green and purple colorway since 1909, the Club didn’t secure registered trademarks for this colorway until 2016.
For many years, the Club has faced numerous issues in relation to preventing the unauthorized third party use of their signature colors. Unauthorized ticket resale platforms have deliberately avoided using the Club’s registered trademarks, instead using the unregistered colorway on their websites to deceive consumers or associate themselves with the tournament.
For over 100 years, the Club has relied on the common law tort of passing off to prevent third parties from using the colorway to take advantage Wimbledon’s reputation. Securing a registered trademark for this colorway was crucial for the Club, as the registration of a trademark would act as prima facie proof of the owner’s entitlement to the mark. The Club could then rely on their registration for their color combination to challenge infringers and avoid the cost and uncertainty of passing off actions.
Securing a color trademark is, however, only achieved in exceptional circumstances. Where rights in color marks are registered, the monopolies granted by the Intellectual Property Office are limited in scope. Rights in color marks are only granted for specific shades of color(s). This is usually only achieved by providing extensive evidence proving that through continued use of the mark, the relevant public has come to associate the color combination with the party seeking to protect it.
To secure a registration, the Club provided evidence that consumers associated these colors with the Wimbledon tournament, as well as pictorial evidence dating back to the early 20th Century showing use of the green and purple colorway. Although the Club’s attempt to register this mark was initially unsuccessful, in June 2016 the Club satisfied the UK IPO that the distinctive character of their dark green and purple colorway had been established through continuous for more than a Century. After 107 years, the distinctive colorway was finally protected as a registered trademark.
Written by Jasmine Walters, Assistant, and Dale Carter, Partner, Reddie & Grose
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