As the UKIP logo bears significant similarities to the Premier League's, and the Premier League logo has a strong reputation in the UK, the Premier League can argue that UKIP's logo infringes its trademark
Alex KelhamAlex Kelham is an experienced commercial and IP lawyer, and leads Lewis Silkin’s firm-wide Sports Business Group. She advises brands, marketing agencies and other IP-rich businesses on a range of commercial and marketing issues.
Lions are considered regal and are associated with pride, power, and beauty. It is therefore no wonder that they are a common choice of businesses to represent their brands. The proliferation of lion logos can however lead to conflict.
Normally, this is only of concern to trademark attorneys and the brands involved, but recently it became mainstream news... the launch by the nationalist UK Independence Party (UKIP) of their new purple lion head logo, was immediately identified as being remarkably similar to the purple version of the English Premier League‘s logo.
Was this intentional? Who knows! Will UKIP benefit from an association with the Premier League? Possibly. Does this potentially damage the brand equity in the Premier League’s logo? Quite probably, particularly in the minds of those who object to the politics of UKIP.
So where does this leave the parties legally?
The Premier League’s lion is a registered UK trade mark. Trademarks are often heralded as providing monopoly rights, enabling the owner to stop anyone else using the same mark. However, the protection actually afforded by trade mark registration is subtler than this.
Running a search on the UK Intellectual Property Office’s website for lion and heraldic lion logos gives you more than 1,000 hits. The reason that there can be so many lion marks is two-fold. Firstly, a trade mark only protects against identical or similar marks (and lions can of course be depicted in numerous, quite different, ways). Secondly, trademarks normally only protect against use of identical or similar marks in relation to the same or similar category of goods or services for which they are registered.
UKIP is a political party and presumably the Premier League will not be using its mark in relation to political services. Similarly, it’s safe to assume that UKIP will not be running a football league any time soon. UKIP would also likely point out the differences between its lion and the Premier League’s lion: ‘generic’ marks such as a lion’s head are afforded less protection than completely unique words or designs which are made up and not commonplace.
However, additional protection is afforded to marks with a reputation in the UK: a ‘famous’ mark will be infringed by the use of a similar mark which “takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.” As the new UKIP logo does bear significant similarities to the Premier League logo, and the Premier League logo undoubtedly has a strong reputation in the UK, it seems that the Premier League is in a position to argue that UKIP's logo infringes its trademark.
The analysis above relates to trademark law. However, commentators have also suggested UKIP’s logo may infringe copyright in the Premier League’s logo.
Copyright is the legal right given to authors which protects their creative ‘works’. Unlike registered trademarks, there is no need to apply for copyright protection – copyright arises automatically on creation of the ‘work’. However, it doesn’t create the same monopoly protection as a trademark can, as copyright protection expires after a set period and is only infringed if there is actual copying.
As the Premier League’s lion is a creative, ‘artistic’ work, copyright will subsist in it, but, given that a lion’s head looks a particular way, it is quite possible that the author of UKIP’s lion logo came up with the design without referring to the Premier League’s logo. As such, in the absence of proof of actual copying, it would be hard for the Premier League to assert copyright infringement.
What lessons can sports organisations learn from this tale?
1. The more unique a trade mark, the easier it will be to protect. Many a sports organisation has fallen into the trap of adopting descriptive or generic names for their events. 'WORLD CUP' is used in many sports, hence why we are encouraged to call the football World Cup the 'FIFA WORLD CUP' - only the 'FIFA' element is given strong protection by trademark law. Similarly, use of common iconography in logos which represent the sport, such as the ball that is used in it, is likely to be given lower protection.
2. The more famous your mark is, the stronger the protection you will get. As such, investing in the promotion of your brand is valuable. The consistent use of a single, strong brand is also more likely to put you in a stronger position than using lots of sub-brands or variations. This is why adherence to brand guidelines and approvals processes is so important in practise.
3. If another mark which is identical or similar to yours starts to be used by a third party, take action quickly. Asserting your rights promptly will minimise the damage that the similar brand can do. Making it known that you will take legal action can also put off others who are thinking of exploiting your brand for their own gain. This does, however, need to be balanced against the PR consequences of being seen to be too heavy handed.
4. Have processes in place. Make sure the marks you use are registered comprehensively for the relevant goods and services and in the countries, in which you are active. It is also possible to set up 'watch services' to be alerted to trademark applications for similar marks, thereby allowing you to object to similar marks during the application process and possibly prevent registration. Note that watches are however only helpful if a trademark application for the ‘new’ brand is made. If a brand is launched without an application being made (as seems to be the case with UKIP’s new logo), there is no forewarning.
5. Undertake searches before launching a brand. Trademark searches, especially for logos, are not always easy and can be quite expensive but they are almost always worth the investment. A failure to check if there is anything similar in the market will leave you in the position UKIP is now left in: facing the embarrassment of getting it wrong; the potential for legal action; and most likely, the cost of undertaking another expensive re-branding exercise.