Date: 1 October 2018
Personal names can be registered as trade marks. As Section 1 of the Trade Marks Act 1994 (TMA 1994) states, “A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging”, and this provision even extends to common names; for example, “Nichols”, a surname which occurs frequently in the London telephone directory (Nichols plc v Registrar of Trade Marks; C-404/02).
Successfully registering a person’s name as a trademark can allow that person to establish a monopoly right to a brand built around the name, which brings financial benefits from licensing agreements and merchandising and safeguards against third party usage. As such, it is a move that is becoming increasing popular, particularly in this age of social media branding strategies.
However, it can be difficult to register names as trade marks, as illustrated by some recent cases involving sports celebrities.
It has been widely reported that the Swiss tennis star Roger Federer signed a reported $30 million (£23.3m) per year endorsement deal with the Japanese retailer Uniqlo, better known for casual clothing. The most surprising feature of the deal was that the American sportswear giant Nike, the company that had previously sponsored Federer for twenty years, retained the rights to the famous “RF” logo. Nike owns the trade mark rights in the RF logo in various countries covering clothing and footwear, despite the fact that Federer has retained the rights to trade marks covering his full name and signature.
How the deuce will this be resolved? Well, it seems likely that Nike and Federer will come to an agreement rather that battling it out in a court of law. Federer has commented that “‘The RF logo is with Nike at the moment, but it will come to me at some point. I hope rather sooner than later, that Nike can be nice and helpful in the process to bring it over to me. It’s also something that was very important for me, for the fans really. Look, it’s the process. But the good news is that it will come with me at one point. They are my initials. They are mine. The good thing is it’s not theirs forever. In a short period of time, it will come to me”.
The sharp-eyed observer then noticed that the launch material for Uniqlo’s new Federer-inspired clothing range featured the star’s signature rather than the RF logo.
In the writer’s view, it was not a smart move to agree to a clause that allowed Nike to retain ownership of the RF logo after termination of the endorsement contract, but it’s not game, set and match. Federer cleverly managed to retain the rights and obtain trade mark registrations for his full name and, should Nike not want to play ball, Federer could design and register a brand new logo.
Turning from tennis to football, a recent decision of the EU General Court (GC) confirmed that Argentinian soccer player Lionel Messi could register his name as a trademark for sports equipment and clothing (Messi Cuccittini v EUIPO; T-554/14). The GC found that Messi’s reputation went beyond the purely sporting field and he was famous enough to overcome phonetic similarities with Spanish bicycle clothing brand Massi.
Lionel Messi applied to register the figurative mark shown below for rescue apparatus and instruments (class 9), clothing, footwear, headgear (class 25) and gymnastic and sporting articles not included in other classes (class 28).
The EUTM application was opposed by Jaime Masferrer Coma, on the basis of earlier MASSI word marks (since transferred to the intervener, JM.-EV e hijos, SRL) which covered (amongst other things) helmets for cyclists, protective gear against accidents, devices for personal protection against accidents (class 9), clothing, footwear, headgear (class 25), and bicycle gloves, protections for the shoulders, elbows and knees (class 28).
The opposition was upheld by both the Opposition Division and the Board of Appeal. The Board took the view that there was a likelihood of confusion between the marks at issue because, on the one hand, the goods included in Classes 9 and 25 were identical and the goods in Class 28 covered by the mark applied for were similar to, or very similar to, the “cyclist helmets” included in class 9 designated by the earlier mark and, on the other hand, that the marks at issue were similar because their dominant elements - consisting of the terms “massi” and “messi” - were almost visually and phonetically identical. However, from a conceptual point of view, the Board found that only football and sport enthusiasts would associate “messi” with the surname of the famous football player.
It got better when Messi appealed to the GC, which reached a different conclusion as regards the conceptual difference between the marks, namely “fame” and the consumers’ perception of it. It was common ground that the relevant public consisted of average consumers of the EU, normally informed and reasonably attentive and advised and who purchased clothing, sporting goods and protective devices. Although the GC took the view that the mark applied for was almost identical visually and phonetically, it disagreed with the finding of the EUIPO and the Board that the reputation enjoyed by Lionel Messi concerned only the part of the public that was interested in football and sport in general. The GC said that “he is a public figure known to most informed people, reasonably attentive and knowledgeable, who read the press, watch the news on television, go to the movies or listen to the radio”. Instead of considering whether some of the relevant public would find it difficult to tell the two marks apart, the Board should have examined whether a significant part of the relevant public was unlikely to make a conceptual association between the term “messi” and the name of the famous soccer player. The fact that both brands are in the sports market did not assist the opponent, as even though some might be unaware of the Argentinian striker, this was unlikely to be the case for the average consumer as the GC found that the fame of Lionel Messi extended beyond the field of play. The GC’s decision to overturn the Board’s ruling shows that fame can be a significant factor it the court’s assessment of the likelihood of confusion, and that assessment of the notoriety of trade mark owner depends on the subjective evaluation of the judge. It will be interesting to see the outcome of the appeal in this case lodged on 19 July 2018 (J-M.-E.V. e hijos v Messi Cuccittini; C-474/18 P).
Staying on the football pitch, in the weeks leading up to the 2018 FIFA World Cup, the England football player Jesse Lingard applied to register four trademarks at the UKIPO, essentially covering clothing, footwear and headgear in class 25: two word marks for his nickname ‘JLingz’, and two figurative marks, featuring the image of his goal celebration, in which Lingard places his wrists together and uses his fingers to make a “JL” shape to represent his initials:
There are penalties under the TMA 1994 for the unauthorised use of a trade mark. Simply imitating the celebration shown above with your hands wouldn’t fall foul of the legislation, but the marks do give Lingard the power to prevent others from using the logos in the course of trade.
The success of football players in monopolising their names in the EU is not, unfortunately, mirrored in China where third party use of the names of famous World Cup players to market products is particularly widespread. Here, we understand that several companies have successfully registered various names and nicknames as trademarks for their own products, which has resulted in products such as “Messi” fruit juice, “Harry Kane” babywear and even a “Cristiano Ronaldo” flush toilet.
However, there is another reason why Ronaldo, Messi, Lingard et al would want to register their name as a trademark, and that is to block trade mark trolls. In fairy tales, a troll was said to extort money from someone attempting to cross a bridge. In the context of trade marks, a troll will try to extort money from an unsuspecting person who attempts to adopt a similar mark. That person will then have to either pay the troll for a licence to use the mark or choose to go to court and litigate the matter. By registering names as trade marks, sports personalities (and others) are able to build a brand, prevent third parties from making money off their celebrity and stop trade mark trolls from getting there first and hence cut future legal costs. It’s child’s play!