Portsmouth Football Club has applied to register the word “Pompey” as a trademark.
But will they be successful?
And if they are, what impact will it have on the city and local traders?
In its current form, I have my doubts whether this application will succeed because they have some huge obstacles to overcome.
A “trade mark” means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.
The Trade Mark Act 1994, which gives this definition also gives some explanation as to what can and cannot be registered. For example, a trade mark must:
- Be distinctive, not descriptive;
- Be capable of being represented graphically;
- Be able to distinguish the products and services of one trader from another.
There are also some specific exceptions. For example, a trade mark must not:
- Consist exclusively of an indication of a product’s or service’s quality, intended use or geographic origin;
- Be customary in a particular trade;
- Consist of national flags or other specially protected emblems; or
- Be contrary to public policy or accepted principles of morality.
“Pompey” as a proposed trademark, fulfils some of these criteria, but where it’s likely to encounter problems is in the requirement to distinguish the products and services of one trader from another.
In other words, when you see a product with “Pompey” on it, where do you think it comes from?
In this case, the difficulty is that the city of Portsmouth is also known as “Pompey”. So, when someone buys a products or services do they think it comes from the city or the football club?
If they think it’s from the city, then this is clearly indicating the geographic origin of the products and services, and therefore the trade mark cannot be registered.
If the trade mark is granted, Portsmouth Football Club will have the exclusive right to use the word “Pompey” in relation to the products and services they have registered it for.
If you look at the application, there are hundreds of them!
The club say that they are doing this to clamp down on a small number of traders selling counterfeit merchandise. I’m all for this, and all businesses should take whatever steps they need to protect their brand, but this seems to be a step too far.
The club is trying to reassure existing businesses which use the word “Pompey” in their name that the application won’t have any impact on them. And they’re right. These businesses have a pre-existing right to use the word, and the football club can’t stop them.
But what about new businesses?
Because of the exclusivity given by trade marks, and the fact they can be renewed indefinitely, Portsmouth Football Club could stop any new businesses from using the word “Pompey” in relation to products and services for which the club has registered the trade mark.
Whilst the current owners of the football club may have honest intentions, what happens if the club is sold in the future?
Would they clamp down on local businesses?
If they did, it could have a huge detrimental impact on the local economy.
We will have to wait and see what happens with this application and whether any formal oppositions are lodged with the Intellectual Property Office.
My view is that this application goes far beyond what is needed to clamp down on a few street traders selling hats and scarfs.
In all likelihood, they will need to make changes to their application to make it more realistic.
This article was originally published on LinkedIn.