The slogan and chant “We’re all Wednesday – Aren’t We?” has become synonymous with Sheffield Wednesday F.C. Back in the day, when fans could safely attend games in a pre-Covid-19 world, the song “Ole, ole…We’re all Wednesday – Aren’t We?” would be sung around the Hillsborough terraces.
The acronym “WAWAW” is equally as popular. Owls’ fans frequently use the acronym on social media, particularly in the hashtag format - #WAWAW. Wednesday has used the acronym in an official capacity with the term featuring in match day programmes, promotional materials, merchandise and as the name for club fun days.
Sheffield Wednesday fan and executive box owner, Mr Paul Jennings, filed a UK Trade Mark Application for “WAWAW” on 16 March 2018. Registration was sought for a broad range of merchandise, tobacco-based products and e-cigarettes. The application proceeded to registration on 29 June 2018, without challenge.
The registration was unsurprisingly a cause for concern for Sheffield Wednesday as it potentially gave Mr Jennings a basis to stop the club, and third parties, from using the term “WAWAW”, or a confusingly similar variation, in the UK. Use of “WAWAW” by Wednesday on merchandise and promotional materials could have potentially infringed the trade mark registration and entitled Mr Jennings to injunctive relief or damages.
According to reports, Sheffield Wednesday only became aware of the conflicting mark after it had obtained registration. This prevented the club from filing an opposition during the application process. Instead, Wednesday filed an application for a declaration of invalidity that sought to cancel the registration.
The ground(s) used to challenge the registration have not been disclosed but it is likely that the club claimed that it had developed earlier unregistered rights in the term “WAWAW”, as a result of the use that has been made of it.
The UK recognises unregistered rights and it is possible to challenge an application or registration where the use of the conflicting mark would amount to passing off. This is likely to be the case where a brand or sign has developed goodwill through use.
Mr Jennings and Wednesday reached a settlement before the application for a declaration of invalidity reached a decision. The contested trade mark registration was transferred from Mr Jennings to Sheffield Wednesday on 19 March 2020 and is now owned by the club.
Although Sheffield Wednesday managed to resolve this dispute amicably, the conflict highlights the importance of obtaining trade mark protection for important brands - particularly in instances where a brand has been disclosed to the public. Trade mark registrations usually confer a more robust level of protection than unregistered rights and they typically provide more legal certainty for the purpose of enforcement, as well as a number of other benefits.
Unregistered rights can often take time to develop and, in the absence of such rights, there is often little recourse for an interested party to challenge the use or registration of a trade mark that conflicts with its brand. What’s more, a conflicting trade mark application or registration could potentially be used to stop the interested party from itself registering the brand.
Hopefully we will see the fans return to the stands soon. In the meantime, at least they can rest easy knowing that their club will not find itself on the receiving end of an infringement action for using the term “WAWAW”.