Football Governance Act- Implications for brand owners

The Football Governance Act received Royal Assent on Monday. It establishes a new Independent Football Regulator and seeks to provide safeguards for our national sport and our clubs' heritage.

The Act does not make explicit reference to trade marks but Section 49 makes it clear that, in order to protect club heritage, a regulated club must not make any material changes to any emblem or crest of a team operated by the club, or the predominant home shirt colours of such a team, unless reasonable steps have been taken to establish that any changes are supported by a majority of the club's fans in England and Wales. 

This will have a significant impact on the operation of brand strategy at regulated clubs in England and Wales. Football clubs have long recognised the power of brand recognition and have sought to protect club branding accordingly, via registration of emblems and crests as trade marks worldwide for example. In recent years, it has been common for clubs to seek to modernise these elements of their branding in order to align themselves with the expansion of the game into a modern, global market. 

In future, if they are seeking to make “material changes” to such elements of their branding, clubs will need to amend their current strategies for new brand development by implementing processes to ensure that they have taken “reasonable” steps to establish that any changes are supported by a majority of their fans in England and Wales.  

This is important from a brand protection perspective, as when developing strategies for clearing and protecting new branding via trade mark registration timing is king. These new requirements will mean that clubs will need to align not just clearance and launch plans with their brand protection strategies, but also the approval process. 

What is to be determined as “reasonable”, or what will be deemed to establish fan support is yet to be determined, but it could involve things like surveys, online questionnaires, or an online option for fans to explicitly give or refuse support for changes via a clickable link. 

What will constitute a “material” change is also yet to be determined, but from a trade mark law perspective any changes to emblems or crests that materially alter the distinctive character of the original signs would constitute new trade marks, so this may be a useful starting point. 

The need for fan approval also brings with it some interesting questions with respect to brand ownership for clubs. Intuitively, it would be reasonable for one to assume that a club can do whatever it wishes to existing branding, given that it is ultimately responsible for the direction of the business concerned and the protection and exploitation of club crests and emblems has a pivotal role to play in the huge licensing revenues available to clubs with respect to these elements of their intellectual property. However, we are now moving into a position where “fan ownership” of club branding is coming into play in a sense, given that their support will be required before clubs commit to proposed changes. 

We will watch these developments with interest and would be keen to discuss the issues with our clients and contacts operating in the football sector in England and Wales. 

Clause 49 stops clubs from changing their emblem or crest or predominant home shirt colours without taking reasonable steps to establish that those changes are supported by a majority of the club’s fans in England and Wales. Changes to club names require the approval of the FA, which has rules requiring fan consultation.

thefsa.org.uk/...