Australian Rugby League Commission – protecting its brands and golden history through IP

April 26 is World IP Day for 2019, with the theme of “Reach for Gold – IP & Sports”. Shelston Intellectual Property and Shelston Lawyers, congratulate Australian Rugby League Commission Limited (ARLC) and its related entities including New South Wales Rugby League Limited and Queensland Rugby Football League Limited for their sustained and successful efforts in relation to the application of IP in the sporting arena.

 

ARLC

ARLC is the peak body responsible for the governance, growth and development of the sport of rugby league throughout Australia. ARLC and its related State entities operate and control all the major professional rugby league competitions in Australia including the renowned National Rugby League (NRL) competition and the annual State of Origin series.

Rugby league in Australia

Rugby league can trace its history back to as early as 8 August 1907, when New South Wales Rugby League (NSWRL) was founded. The first season of the Sydney rugby league premiership took place in 1908, and was contested by nine teams.

NSWRL ran the major rugby league competition of New South Wales, and subsequently Australia, from 1907 to 1994. In 1995, control of the Australian rugby league competition passed from NSWRL to ARLC. ARLC has controlled professional rugby league competitions in Australia since that time (together with News Limited during the period 1998 to 2012).

The NRL competition is a competition between professional rugby league clubs in Australia and New Zealand. It has been sponsored by Telstra Corporation Limited (Telstra) since 2001, and is called the NRL Telstra Premiership. It is contested by sixteen teams, fifteen of which are from clubs based in Australia, and one of which is from a club based in New Zealand.

The NRL competition is regarded as the world’s elite rugby league club competition. The NRL Grand Final is one of Australia’s most popular sporting events, and one of the largest attended club championship events in the world.

The State of Origin series is contested between rugby league teams representing Queensland and New South Wales and is comprised of elite players from the NRL competition. Accordingly, the State of Origin series is widely regarded as the pinnacle of the sport of rugby league worldwide as it comprises the best players from the most competitive and highest quality rugby league club competition in the world. The series is also widely considered to be one of Australia’s greatest sporting rivalries and premier sporting events, attracting extensive game attendance and high rating television viewing.

ARLC’s trade mark portfolio

ARLC and its predecessors have established a substantial portfolio of trade marks, some of which date back decades. The trade mark portfolio comprises the names, logos and official mascots of all participating league clubs along with the names and brands of ARLC and its associated entities including the names of the various competitions. Shelston Lawyers has had the privilege of assisting ARLC and related entities with their trade mark registration, prosecution, enforcement and defence work for more than 10 years.

ARLC’s trade mark portfolio serves various purposes. First, it protects the valuable intellectual property of ARLC and related entities in club and competition names and brands, many of which have been established for decades or longer. ARLC uses its registered trade marks to prevent other sporting codes from adopting club or competition names which are too similar to those associated with ARLC. ARLC has also successively opposed many trade mark applications by third parties wishing to unfairly capitalise on ARLC’s strong reputation in its names and brands.

Secondly, ARLC’s trade mark portfolio enables ARLC to commercialise its brands and reputation through licensing arrangements with authorised producers and distributors of official ARLC and NRL merchandise and through media rights deals. ARLC generates substantial revenues from its licensing and merchandising programs and media rights deals. A related purpose is to prevent unauthorised third-party merchandisers from seeking to pass off their rugby league merchandise as official merchandise sanctioned by ARLC.

ARLC makes very active use of its trade marks including in media promoting the competitions, on club jerseys and other official match paraphernalia, on ground signage and on commercial merchandise. Likewise, the trade marks are frequently referenced by television, print, radio and internet media.

A key victory for ARLC through its trade mark program

As indicated above, one of the purposes of ARLC’s trade mark registration program is to successfully establish and defend its title to its names and brands.

In recent years, ARLC (and its associated entities) have opposed various third-party applications for, and defended their own applications for, trade marks related to the State of Origin series. ARLC has been successful in every matter to date. In a decision confirming ARLC’s successful defence of one of its applications for STATE OF ORIGIN, the hearing officer stated that “In the present matter, the Applicant [ARLC] has provided overwhelming and continual evidence of use of the Trade Mark from well before the Relevant Date. This evidence is of such an extent that it establishes in fact that the Trade Mark distinguishes the Applicant’s Goods from the goods of other traders. An endorsement to this effect will be added to the Register.”

To assist the hearing officer in reaching this conclusion, ARLC submitted hundreds of pages of evidence of its use of the trade mark over an extended period together with evidence of substantial match attendance figures and media coverage involving ARLC’s use of State of Origin-related branding. ARLC has subsequently used the findings from this hearing to successfully oppose other third-party applications and support its own further applications for State of Origin related trade marks. ARLC’s clear title to those trade marks is now beyond doubt as a result of its vigorous prosecution of its own applications and vigorous opposition of third party applications. Shelston Lawyers is proud to have acted for ARLC in all of these matters.

ARLC Reaching for Gold

While ARLC’s primary goal will always be the promotion and ongoing development of rugby league, it can be justifiably proud of its long history of successfully using its trade mark portfolio to protect its reputation, and monetise its brands through merchandising and media rights licensing.