The recently re-badged Melbourne City Football Club and a suburban soccer club with the identical name, could both face a legal challenge in their race to trademark the name.
The A-League Club and South Kingsville’s Melbourne City Football Club have applied to Intellectual Property Australia to trademark the name. Decisions have yet to be made in either case.
But Andrew Christie, an intellectual property expert at the University of Melbourne, said there were barriers to registering the name in either case because ”Melbourne City” was too closely associated with a general descriptive term that is used widely.
He likened it to someone trying to trademark the words ”mobile phone”.
”It’s highly descriptive geographically and functionally,” Professor Christie said. “And it’s going to be tough for someone to persuade IP Australia that it has enough distinctiveness.
”It’s very unlikely that [name] can be trademarked. It’s too broad a description, so no one else can use it.”
Professor Christie added a separation between a location and a club was the reason why sporting teams often had an official nickname, such as the Sydney Swans or Carlton Blues.
Businesses didn’t need to trademark their name, he said, but most do because it gave them exclusive use.
The A-League club said: “It would be wholly inappropriate for the club to provide comment on speculation, while a formal process is under way before the trademark office.”
The suburban club was contacted for comment.
Both clubs have been locked in disagreement since January when English Premier League heavyweight Manchester City, which is owned by Abu Dhabi royalty, paid $12 million for Melbourne Heart and immediately mooted a name and colour change.
The club was officially re-launched with its new name and club colours on June 5.
The A-League club has defended its name change previously, saying it has ”no intention of threatening [the suburban club’s] identity or restricting their ability to operate as they currently do”.
The suburban club, part of Football Federation Victoria, is registered as an incorporated association in Victoria and claims to have been established in 1991. It fields teams in seniors, reserves and juniors.
The club has been vocal critics of the A-Leagues club’s decision to re-badge itself and has engaged trademark experts Cooper Mills lawyers to investigate its legal options, such as an injunction.
Professor Christie said another potential thorn in the A-League club’s side was the fact that as part of its Intellectual Property application, it is required to prove it owns the right to the name, something it could struggle with.
”If there’s someone who’s already been using the name for years, you may have trouble showing ownership,” he said. ”The little club has an advantage because they can show that they’ve been using it for a long time.”
Professor Christie said even if the A-League club was granted the trademark, the South Kingsville club could legally continue to play under its name because it had been using it for so long.