AFL’s Melbourne Football Club logo challenged by sports historian for factual inaccuracies
In an unusual case before the Australian Trade Marks Office, a Tasmanian amateur historian, Mr Ross Smith, has opposed the Australian Football League’s Trade Mark Application for the Melbourne Football Club logo on the grounds that the prominent date of establishment, 1858, is one year too early.
The logo is featured prominently on a range of AFL merchandise including tops, jackets, scarves, stubby holders, cooler bags, drink bottes, shot glasses, travel mugs and rugs.
Trade mark opposition grounds
The Application was opposed on the basis that use of the mark would be contrary to law (Section 42(b) of the Trade Marks Act 1995) and that use of the mark would be likely to deceive or cause confusion (Section 43 of the Trade Marks Act 1995), based on Mr Smith’s contention that the words “EST 1858” are factually inaccurate because the Melbourne Football Club was established in 1859.
Newspaper articles evidence
In support of this contention, Mr Smith filed extensive evidence from primary sources (primarily contemporaneous newspaper articles) gathered in the course of detailed and methodical historical research showing that the Club was established on 14 May 1859. On that date a meeting was held at the Parade Hotel, East Melbourne for the purposes of forming a football club and a committee was appointed. The meeting was held after a game of football in the Richmond paddock, in which some engaged in “the practice of catching and holding the ball, while others strenuously objected to it”. Rules of the Melbourne Football Club were drawn up by the committee a few days later on 17 May 1859. A watermark of the handwritten Rules showing the date “May 1859” appears on the background in the crest of the logo.
A decision issued on 13 February 20121. The Delegate of the Registrar of Trade Marks found that on the balance of probabilities the Club formally incorporated as an association with office bearers elected by enrolled members in 1859, and that football played to rules formulated by the committee of that association was first played in 1859. Notwithstanding the evidence filed on behalf of Mr Smith, the Delegate was not persuaded that the AFL’s claim to the Club having been established in 1858 is factually wrong because there was evidence that Melbourne men gathered to play football in the Winter of 1858. This follows a letter from TW Wills to “Bell’s Life in Victoria” newspaper on 10 July 1858 calling for the formation of a football or rifle club. A short extract from the somewhat amusing letter is set out below:-
Sir, Now that cricket has been put aside for some few months to come, and cricketers have assumed somewhat of the chrysalis nature (for a time only ’tis true), but at length will again burst forth in all their varied hues, rather than allow this state of torpor to creep over them, and stifle their new supple limbs, why can they not, I say, form a foot-ball club, and form a committee of three or more to draw up a code of laws? If a club of this sort were got up, it would be of vast benefit to any cricket-ground to be trampled upon, and would make the turf quite firm and durable; besides which it would keep those who are inclined to become stout from having their joints encased in useless superabundant flesh.
The Delegate stated as follows:
While the Club arguably did not achieve legal personality until May 1859, I am satisfied that it began its existence as a club in 1858. I do not consider that the dead hand of legalism should deny the fact that a group of men met for the purpose of playing football in 1858.
In reaching his decision, the Delegate gave great weight to the belief of both the Club and the AFL that the Club was established in 1858. The Delegate did not state why he gave great weight to this belief.
In relation to references to the formation of the Club in 1858 contained in football history books, the Delegate stated that the opinions of eminent historians are not to be lightly ignored by a government functionary. It was argued by Mr Smith that the incorrect date reference had been perpetuated in various publications, and that it was the Delegate’s responsibility to ensure that registered trade marks did not contain misleading statements. This argument was not accepted.
On the basis of the above, the Delegate was not persuaded that use of the Melbourne Football Club logo would be contrary to law or likely to deceive or cause confusion. Accordingly, it was determined that the grounds of opposition had not been established on the balance of probabilities.
Lessons for trade mark owners
It is important to ensure that any statement or representation contained in your trade mark is accurate and that you are capable of substantiating its accuracy. The consequences of failing to do this may be very costly if the trade mark has been applied to an extensive range of merchandise.
Davies Collison Cave acted on behalf of Mr Ross Smith in the Trade Mark Opposition Proceeding.
- Ross Smith v. Australian Football League 2012 ATMO 20