Timing is everything

‘Twas the night before Christmas, and all was still….except for a breaking story on how Premier League club Manchester City FC’s new club badge had been “leaked” ahead of its official Boxing Day launch (BBC website). How could this have happened and could it have been avoided? The answer potentially lies in the importance of timing and identifying the optimal time to file a trade mark application in any given situation.

Manchester City quite rightly wanted to protect their Intellectual Property (IP) by registering the badge as a trade mark, but the issue appears to revolve around the date the trade mark application was submitted. Manchester City wanted to launch the new badge prior to their match against Sunderland AFC on Boxing Day (26 December) 2015. However, the application was filed at the Intellectual Property Office (IPO) on 22 December, which gave the IPO two full working days to upload the application to their publicly available database before their office closed for Christmas. This gave eagle-eyed members of the public, with an interest in Manchester City, the opportunity to view the new badge and post it online, thereby removing the secrecy and drama surrounding the emblem’s official unveiling.

So when should the trade mark application have been filed at the IPO? Too soon, and anyone could have viewed the application, thereby spoiling the unveiling (which is what happened); too late (e.g. post-launch), and a mischievous 3rd party could have tried to register the badge for themselves, resulting in a potentially time-consuming and costly battle.

The optimal time for the application to be submitted would have been after the IPO closed on Christmas Eve, but before the official launch on 26 December, thereby securing the filing date, but ensuring that the IPO did not have an opportunity to upload the application to its database until at least the first working day after Christmas (i.e. 29 December). This timing would have allowed the big unveiling of the new club badge to have gone ahead on Boxing Day as planned, without the badge already being in the public domain.

There are a number of possible reasons for the sub-optimal timing in this case, including: a potential mix-up between Manchester City’s corporate marketing and legal teams; Manchester City’s IP advisors not being fully briefed, or not fully understanding the objectives of the launch and the importance of ensuring secrecy pre-launch; or just festive over-enthusiasm to file all applications prior to the Christmas break.

Despite possible embarrassment and/or annoyance for the football club, according to Manchester City’s website, the launch went ahead as planned: “Hundreds of Cityzens (Manchester City fans) queued for several hours prior to kick off get their first exclusive glimpse of the badge in a specially updated exhibition pod at City Square. The badge was more widely revealed in the stadium moments before kick-off.”

This situation demonstrates that the precise timing of the submitting of a trade mark application is not always just about getting in first and securing the earliest possible date; in certain circumstances, such as this one, it’s also about keeping things under wraps and securing confidentiality until you are ready to go public.