Staying onside – how to enforce your brand against your own fans

The glare of social media has turned the enforcement of trade mark rights into a balancing act: the need to manage and protect a valuable brand now has to be weighed against the risk of coming across as heavy-handed if a cease and desist letter is made public. That is all the more true for brand owners such as football teams when it becomes necessary to prevent brand misuse by their own fans.

A typical cease and desist letter will point out the brand-owner’s rights and the activities complained of, and then include a request (of varying politeness, depending on the circumstances) that the recipient ceases and desists from those activities. It is increasingly common for such letters to be published on social media, and if they are not worded carefully, the ensuing howls of protest from the angry Twittersphere and beyond can cause significant damage to the brand-owner’s public image.

For football clubs, and other brand owners with a loyal fan-base, it can be particularly challenging to stay onside when enforcing trade mark rights. Football clubs now generate significant revenue from their extensive merchandising activities, and need to take action even when it is their own fans who are using the trade marks without permission. In such cases, a gentle approach is likely to be the most effective, expressing gratitude for the support received by fans, whilst pointing out the need for the brand-owner to protect their valuable assets.

Even brand owners with a loyal following outside the sports sector have embraced the “softly softly” approach: Jack Daniels received considerable favourable media coverage for their “most polite cease and desist letter ever”, gently requesting an amendment to an apparently infringing design, whilst indicating that they were flattered by the alleged infringer’s affection for their brand.

It is possible to avoid an own-goal when defending a brand, but it’s worth getting the tactics right before kick off!

Please get in touch if you would like to discuss this issue or any other IP matter relating to sports.