Manchester City’s takeover and proposed reinvention of the beleaguered Australian A-league club Melbourne Heart has excited soccer fans across the city, but one portion of the population is less than impressed. A suburban club that has competed as “Melbourne City” for over two decades looks likely to face a David and Goliath like struggle if it wants to keep using its team name.

Steps taken by Manchester City indicate it wants to use the name Melbourne City, instead of Melbourne Heart, as part of a total brand overhaul that includes a change in coach, uniform and colours. Related entities of Melbourne Heart’s new owners recently lodged an application to register the business name “Melbourne City FC”, purchased the domain name and applied to register the trade mark “Melbourne City Football Club”. The suburban Melbourne City responded a week later by also making an application to have its name included on the register of trade marks.

The suburban Melbourne City was incorporated as the Melbourne City Football Club Inc. in 2005 and claim to have used the mark since 1991. If this is proven to be correct then, as the first user of the mark, it could be successful in its opposition to Melbourne Heart’s application.

At this stage, both clubs’ have been issued adverse examination reports by the Australian trademark office, and will need to provide further information in support of their application before registration is either approved or denied. Stay tuned for the outcome of their applications.

The Melbourne City story is a timely reminder that all businesses, big and small, should secure brand protection from the outset. Registered marks are much easier to enforce than those that are unregistered. Before launching publicly a brand name or logo, make sure you undertake the relevant searches to determine its availability for use in the region you wish to operate.

This article was prepared by Eliza Danby ( / +61 3 8686 6494) of Norton Rose Fulbright’s Australia’s Intellectual property group.