Aberdeen Football Club sees red over refusal of DONS DRAM UK trade mark application

Aberdeen Football Club has had its UK trade mark application for DONS DRAM for whisky and other whisky drinks refused. This decision of the UK Intellectual Property Office is quite surprising and we believe a better result could have been achieved for Aberdeen FC. One takeaway from the decision is the importance of early filing of trade mark applications for key components of your brand. One of the arguments put forward by Aberdeen FC was that it has been known as The Dons since as early as 1909 but Aberdeen FC does not appear to have any trade mark registrations for the words The Dons or Dons.

Aberdeen FC applied for the UK trade mark DONS DRAM in 2016. This application was successfully opposed by Sandeman, a drinks company, based on its EU trade mark registration for DON FINO with the figure of a caped man for alcoholic beverages filed in 2013. The UK and EU trade mark both operate first to file trade mark systems. Sandeman used its earlier EU trade mark registration to prevent registration of Aberdeen FC’s UK trade mark application because of the similarity of the marks and the goods covered.

We are not convinced by the UK Intellectual Property Office’s decision to find sufficient similarity between the mark DONS DRAM and the mark DON FINO with the figure of a caped man. However, had Aberdeen FC filed UK trade mark applications for DONS or THE DONS for its football activities and merchandise offerings prior to 2013, this challenge to its UK application for DONS DRAM may not have been made. Further, it may not have been necessary for Aberdeen FC to file a trade mark application specifically for DONS DRAM.  

By failing to obtain registered trade mark protection for DONS or THE DONS much earlier, Aberdeen FC has arguably scored an own goal.