How Wimbledon Tennis trademarked its iconic colors
“[R]lights in color marks [in the UK] are only granted for specific shades of a color/colors. This is usually only achieved by providing detailed evidence proving that, through continued use of the mark, the relevant public has come to associate the color / color combination in question with the party seeking to protect it.
The All England Lawn Tennis Club (the “Club”) has for some time held several trademarks for the famous Wimbledon name and other important signs. However, the dark green and purple colourway – associated with the Wimbledon tennis tournament for over a century – has only been protected as a trademark in the UK since 2016.
Why is trademark protection important for sporting events?
Brand protection in the sports industry is crucial, as branding is fundamental to many sporting teams and events. For example, for official sponsors of high-profile sporting events such as the Wimbledon tennis tournament, who pay significant sums to be associated with the famous name, it is essential that the Club has sufficient brand protection. This will reassure sponsors that their licenses with the tournament are protected, discouraging unauthorized intruding traders.
Ensuring the protection of the club’s iconic colors
The Club has always been proactive in its brand strategy, pursuing brand protection with the aim of protecting both consumers and the Wimbledon Championship itself. The Club owns numerous trademarks for words and signs, including the word mark “Wimbledon” and the famous crossed rackets logo. However, despite having used a dark green and purple colorway since 1909, the Club only obtained trademarks for this colorway relatively recently. As a result, for many years the Club faced many issues related to preventing unauthorized use by third parties of their signature colours. Unauthorized ticket resale platforms have continually attempted to impersonate the official Wimbledon tournament. Many of these platforms deliberately avoided using the Club’s trademarks and instead used the unregistered dark green and purple colorway on their websites in an attempt to mislead consumers or associate themselves with the official tournament.
If a mark has not been registered, holders of rights to such signs in the UK must rely on the common law tort of passing off to enforce their rights against infringers. Fraud actions are notoriously laborious, expensive and require the owner to produce evidence of the goodwill and reputation of their mark in the UK, as well as to show that unauthorized use of that mark will amount to or is likely to amount to a misrepresentation. likely to harm their goodwill or business. Therefore, for over 100 years, the Club has been forced to rely on the tort of deception to prevent third parties from using the historic colorway in a deceptive manner in order to take advantage of the Club’s goodwill and ride for free on the coattails of Wimbledon. reputation. Getting a trademark for this colorway was therefore crucial for the Club, as registering a trademark would act as At first glance proof of the owner’s right to the mark. In other words, the Club could rely on their registration for their color combination to challenge offenders and avoid the cost and uncertainty of substitution actions.
Obtaining a color mark, however, is only obtained in exceptional circumstances. Where color mark rights are registered, the monopolies granted by the UK Intellectual Property Office (UKIPO) are limited in scope. For example, color mark rights are granted only for specific shades of one or more colors. This is usually only achieved by providing detailed evidence proving that, through continued use of the mark, the relevant public has come to associate the color / color combination in question with the party seeking to protect it.
Unsurprisingly, the club had to go to great lengths to obtain registration of its green and purple color marks, providing a detailed survey showing that consumers associated these colors with the Wimbledon tournament, as well as collecting a quantity substantial pictorial evidence dating back to the early 20e Century showing the use of green and purple coloring. Although the Club’s attempt to register the mark was initially unsuccessful, on June 24, 2016, just over six years ago, the Club convinced the UKIPO that the distinctiveness of their dark green and purple colourway had been Established by continued use over a period of over a century and 107 years after the mark was first used in the UK in connection with the Wimbledon tennis tournament, the distinctive colourway is finally protected as a trademark.
The mark is in the form of a band consisting of the color green (Pantone No. 349 C) adjacent to the color violet (Pantone No. 268 C). The two bands are of equal proportions and the green band is to the left of the purple band when presented vertically.
To mark Description/limit
The mark is in the form of a horizontal band consisting of the color green (Pantone No. 349 C) adjacent to the color purple (Pantone No. 268 C). The two bands are of equal proportions and the green band is above the purple band.
Dale Carter of Reddie & Grose LLP also contributed to this article.
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