Boro’s brand battle

May 1, 2015

As a lawyer who works with the creative industries, I am fortunate enough to work within areas I am passionate about namely fashion, music and film. When the opportunity to comment on a passion that is even closer to home, concerning my beloved Middlesbrough FC presented itself, I could not resist.

The Evening Gazette reported on Monday that Boro had asked Dudley Lions, a church football team in the Midlands, to stop using the club’s crest on their kit because it was too similar to the iconic Boro crest and infringed its trade mark. Readers of the article may have felt a certain sympathy for the Midlands club, however, it is important to see it from Boro’s perspective as the owner of the rights in the logo.

Boro are on the cusp of what is reportedly the most lucrative game in European football with an estimated worth of £130 million. So how important is brand protection for the club? It is vital. The club’s crest is a crucial part of its goodwill. Any unauthorised use of this logo will undoubtedly affect the value of the brand.

Boro has reportedly agreed that the Lions can continue to wear the kit until it needs replacing. Many brands in the same situation would insist on immediate delivery up or destruction of all items bearing the logo and may even claim damages against the infringer. In my view, Boro have taken a wholly proportionate approach.

It is unfortunate that a team who seemingly had no intention of ripping off the Boro brand have found themselves at the heart of a rights issue. Their apparent lack of intent does not factor into the trade mark infringement – the use of a similar or the same trade mark is sufficient for the wronged party to take action.

On a lighter note, I wish Boro the best of luck for their play off game on Monday. I will indeed be there in full voice on the terraces of Wembley.

Francesca Shepherd

See the Evening Gazette article at the following link: