What do Chelsea Football Club and the London Underground have in common?

The Chelsea FC logo and the London Underground roundel are both very well-known trademarks, with their popularity reflected in a wide range of merchandise.

Chelsea’s logo appears on t-shirts, scarves, and other merchandise, while the London Underground Logo has become a recognizable feature of the London streetscape and can also be found on various merchandise items.

Naturally, the owners of these trademarks want to protect their logos for all of that merchandise. The difficulty with merchandise and trademark protection, however, is that a trademark cannot simply be registered for the item “merchandise”. It must be registered for each of the relevant products. Yet when a trademark is filed, it is often not possible to say exactly which products will eventually form part of the range. Trademark owners therefore tend to opt for broad classifications and include a large number of products.

Two recent decisions of the European Union Intellectual Property Office (EUIPO) concerning the Chelsea logo and the London Underground logo show that a broad trademark registration can also work against the trademark owner.

In both cases, the registrations were partially revoked for non-use. Chelsea retained protection for a range of classic fan items, such as clothing, bags, mugs, posters, toys and footballs. For many other goods and services, however, including financial services, hospitality and retail services, the evidence was insufficient. Transport for London was able to maintain its roundel only for underground railway transport and related travel information. For the broad list of goods and services, ranging from printed matter to clothing, toys and hospitality, the curtain came down.

A broad registration therefore also requires evidence of use for all those products. If that evidence cannot be produced, such a registration is vulnerable.

For a new logo, it is therefore sensible to also consider design law. A design registration protects the appearance of a logo or graphic design and, unlike trademark law, is not subject to a use requirement. That does not make it a substitute for a trademark, but it can be a valuable addition. For an established and old logo such as the London Underground roundel, design law is not relevant. But for an entirely new logo with merchandise value, design law is certainly worth considering.

Author: Arnaud Bos

Bio: Arnaud is trademark attorney and within Knijff responsible for the marketing & communication. Arnaud is specialist in the metaverse and music sectors and his client portfolio includes many upcoming and renowned bands. He keeps a close eye on the latest case law in the EU and will let you know when he sees remarkable applications.