For the love of the name – Intellectual property battle brews between Melbourne and UK football clubs

A between the sticks battle looms between sporting powerhouse Manchester City and a suburban Melbourne soccer club over the club’s name.

According to media reports, moves are afoot for the A-League soccer club Melbourne Heart to rebrand as Melbourne City Football Club.  But some fancy footwork may be needed to deal with the existing Melbourne City Football Club, a division four team in the Football Federation of Victoria’s State League.

Manchester City recently bought the struggling Melbourne Heart.  A company associated with the club filed a trade mark application in January this year for the mark Melbourne City Football Club.  A week later, the local club filed a trade mark application for the same name.   Plans for the Heart’s rebranding appear to be advanced, with a company associated with Heart reportedly registering the domain name,

Registration of the Manchester City mark has been sought for a range of goods from bells to bags and braces.    It has also sought registration for the name for various services tied to running a sporting club such as, scouting of players and hospitality and gaming services.  The local soccer club has filed its trade mark application for sports club services and days later also filed applications for club badges , protective sports gear, sports bags and sports clothing.

A spokesman for the local club has told the media it is in discussions with Manchester City.    It is said to have used the mark since the early 90s and was incorporated as the Melbourne City Football Club Inc, a Victorian association, in 2005.   If this is correct, then as the first user of the mark in Australia the local club has the legal right to own and use the trade mark.  However, it may have difficulties stopping the Heart’s rebranding particularly, without a trade mark registration given the Melbourne City Football Club mark is descriptive.

Aside from battling each other, the parties will want to overcome the Trade Mark Office’s objection to registration of their respective marks with a view to obtaining exclusive rights to the name.  The Office’s objection is likely to have been on the basis that the name is not inherently adapted to distinguish sporting clubs.  The mark is also likely to have been considered deceptively similar to the Australian Football League’s registration for the Melbourne Football Club.


AnitaBrownFLwebAnita Brown, Associate