Blake Morgan helped a landlord secretly trademark all the names of a community football club which it wants to evict, provoking a backlash which has forced the firm to hide the details of the partner in charge of the matter.

In a letter to non-league Dulwich Hamlet Football Club this week, Blake Morgan revealed that last October it secretly registered 'Dulwich Hamlet Football Club', 'The Hamlet' and 'DHFC' as trademarks on behalf of its client, investment fund Meadow Residential. Blake Morgan told the club to stop using its own name and demanded that they “no longer be used on any printed literature and any online activity including websites and Twitter”.

The move to cripple the club came four years after Meadow bought DHFC's ground for £5.7m with the intention of building over it. Its plans were scuppered when it lost a court battle with Southwark Council over its proposed £80m residential development. The club was already reeling from a surprise £121,000 bill for back rent which Meadow presented on Monday, and a threat to evict the club if it doesn't pay up within 21 days.

Fans including Danny Baker and Gary Linker have castigated Meadow for its mercenary approach, and Blake Morgan for agreeing to take part in underhand namenapping. "If I were Bill Gates I would buy this despicable company", said Baker, "forcing them from the ground tonight - and their snidey yellow-eyed lawyers - and I would sack the fucking lot of them. Then bulldoze their worthless buildings for more football grounds".

    Blake Morgan (l) 

A Hamlets fan who is a solicitor told RollOnFriday that Blake Morgan's tactic was "to make it impossible for the club to function" by registering all available IP. He said it was "more sinister", because although DHFC may have the grounds to overturn the registered marks based on existing goodwill, the landlord and Blake Morgan were "relying on the fact that they have no money to fight a claim, therefore the only purpose can really be to put the club out of business". 

In a statement Blake Morgan said, "We were asked to provide advice on trade mark law as part of our client's complex discussions about land at Champion Hill. We're aware commercial conversations between Meadow Partners and Dulwich Hamlet FC are ongoing, but are not party to these and cannot comment further".

DHFC is known for being a forward-thinking club, fundraising for LGBT causes and holding charity games for Syrian refugees. But no longer. ROF's solicitor source said, "Had I been the lawyer receiving that instruction I think within 5 minutes I’d have realised the dubious motives and potential for huge amounts of negative publicity weren’t worth the few £k they got for the work – a pretty silly instruction to take".

The backlash appears to have been so severe that Blake Morgan has removed from its website the profile of the partner whose email address was given on its widely-circulated correspondence with the club. 
Tip Off ROF

Comments

Anonymous 09 Mar 18

These are pretty cut-and-dried bad faith registrations, aren't they? It's been a while since I've had to do much TM work but I just checked the TMA and under Section 3(6) "bad faith" is an absolute ground for refusal. Under Section 47(1) a registration may be declared invalid if it was registered in breach of Section 3.

An application for a declaration of invalidity can be made by anybody, including the Trade Mark Registrar (s47(3)), so it's entirely possible that the UKIPO might take action itself to sort out this one or that any aggrieved fans can get on with making an application. And the effect of invalidity is that the TM is treated as never having been registered at all.

Given the huge amounts of outrage on this one DHFC should easily be able to crowdfund a legal response and if they do it looks to me to be a slam-dunk. Although that's on the basis of 15 minutes' research and I'd defer to anyone who specialises in this area.

TLDR: This is not just grubby but stupid behalf of both BM and their client.

Roll On Friday 09 Mar 18

I would contribute to a crowdfunding initiative and time towards any legal challenge, although I am not an IP specialist. I am however an in house lawyer and Blake Morgan will receive no more instructions from me. I would be embarrassed to have them fighting my corner!

Anonymous 09 Mar 18

RoF, why not name and shame the partner who acted on this? You can just make out his name on the letter DHFC have posted on their twitter feed. I Kidd you not.

Anonymous 09 Mar 18

Very silly instruction - gives the whole industry a bad name. Hope the lawyer gets a lot of s*** from this.

Anonymous 09 Mar 18

Blake Morgan are making out like this was a one off instruction for which they got a few £k, but if you look at the planning docs you can see they have actually been leading on this since 2016. Meadow's only in house lawyer is an ex BM guy who I suspect gives them a lot of work. Can't be easy to pay for their swanky new offices on regional rates, either. And they have previous - also acted on attempts to evict Millwall from The Den.

Anonymous 09 Mar 18

Blake Morgan are sailing pretty close to the wind here. I think a well placed complaint to the SRA might be in order.

Roll On Friday 09 Mar 18

Just read the letter. Hard to take anyone seriously who can't spell trade mark the proper way... looks like they've removed the partner from the BM website now anyway. Didn't fancy the wrath of the football community perhaps. I'm pretty sure the football club has an "own name" defence to this sort of thing. Maybe.

Anonymous 09 Mar 18

They would undoubtedly have had knowledge that the applications were being made in bad faith, as reasonable searches would have been conducted prior to the application, and even less then average due dilligence (such as a simple internal conflict check on the instruction...) would have turned up the existing parties rights.

I agree an SRA complaint is in order, this is cut and dry a breach of the Code of Conduct and Outcomes.

Anonymous 09 Mar 18

http://www.legalweek.com/2018/03/09/blake-morgan-and-deutsche-turn-to-mediation-to-resolve-banks-8-4m-negligence-claim-against-firm/

Not a good week then

Anonymous 09 Mar 18

http://www.brixtonbuzz.com/2017/11/dulwich-hamlet-needs-your-help-to-stay-alive-donate-to-the-club-and-cheer-them-on-at-champion-hill/

Anonymous 09 Mar 18

SRA complaint already formally made yesterday but the more the merrier - if they get a few then I assume the attention they give the matter will increase.

Anonymous 09 Mar 18

[a]https://www.justgiving.com/crowdfunding/savedulwichhamlet[/a]

Would urge you to donate.

Anonymous 09 Mar 18

Bird & Bird - time to step-up and do some pro bono trade-mark or passing-off litigation against the developer. Come on, chaps. The publicity alone would be worth 10x a chargeable retainer...

Anonymous 09 Mar 18

I would have refused those trade mark instructions.I have told clients fairly often not to register competitors' trade marks when they raise it and it's clearly pointless and spurious and will just court trouble. Also most of us after at least a few years doing this tend to say how we think something might look, never mind the law. Surely they must have realised the adverse PR for their client and their firm which was likely to flow from this?

Anonymous 13 Mar 18

To say that this incident has damaged the reputation of solicitors would be to grossly understate the situation.

But how far can a solicitor go in damaging the interests of non-clients while pursuing instructions which are, at least, lawful?  If your client tells you to make the other side an offer they can't refuse, then you might be straying into unlawful activity. But what if the instructions are lawful but, dare I say it, make you uneasy (even if it does not extend to horses' heads)? You are, are you not, a hired gun?

The Law Society Gazette ran an article in 21 September 2001 titled “Death of the hired gun”. Maybe the Gazette was wrong. Maybe there are some lawyers who will do just what they are asked to do. The article concerned a disciplinary case in which a solicitor was fined £25,000 and ordered to pay substantial costs. The solicitor had pursued his client’s interest energetically – too energetically. Counsel for the solicitor ran the “hired gun” defence. The defence failed.

In March 2015, the SRA produced a document headed “Walking the Line”. This document uses the term “hired gun” four times. For example: “It has been argued that lawyers owe little or no duties beyond those to their clients and that they are "hired guns”. The legal and regulatory rules governing professional practice, however, clearly cover impropriety arising from behaviour that was in the best interests of the client.”

And “Although solicitors must fearlessly advance their clients' cases, they are not "hired guns" whose only duty is to their client. They also owe duties to the courts, third parties and to the public interest. Breach of those duties can give rise, for example, to wasted costs orders or to findings of misconduct.”

It will be interesting to see if the SRA will take note of the actions of the hired gun in this case. And I would add that young solicitors starting out on their careers should take heed. Or you could become a consigliere and change your name to Tom.

Anonymous 15 Mar 18

The dangers of dabbling. The letter was written by a property lawyer not a a trade mark lawyer.

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