November 26, 2013

Now that the first anniversary of the London 2012 Olympic Games has been and gone, it seems appropriate to reflect upon its legacy. Unsurprisingly, this includes enhanced interest and investment in UK sport and a new-found celebrity status for many of the competitors. However, few have focussed on the fact that the Games have been a catalyst for a flood of unusual trade mark registrations by the athletes.

In the months (and days, in some cases) following the Closing Ceremony, Mo Farah registered his ‘mobot’ pose and Bradley Wiggins and Jessica Ennis applied to register their names as trade marks, all joining the world of personal branding in sport and following in the footsteps of Usain Bolt, who registered his ‘lightning bolt’ stance in the months ahead of the Games. However, Gareth Bale’s recent move to register his ‘eleven of hearts’ hand sign shows that footballers are still ahead of the game.

Although sports personalities and celebrities have been involved in sponsorship and marketing deals with big brands for years, it is only a recent trend that has seen individuals branching out to exploit their own personal merchandising ventures, increasing value not only in their own brands, but also in the brands with which they are already affiliated. Gareth Bale’s ‘eleven of hearts’ hand sign features the number 11 inside a heart shape made from his hands. Commentators suggest that, in this apparent move to consolidate his brand and take advantage of his reputation, Bale is likely to earn an additional £3 million a year.

Background                                                                                                                        

Social media and the internationalisation of sports and sport stars have created a new market for sports personalities. With press interest and the fame that comes with it, the public are interested in individuals’ off-the-pitch exploits just as much (if not more) as their sporting successes. Big-money football transfers and on-the side modelling careers have heightened that fame and, in many instances, lead to the replacement of traditional football club loyalty with dedicated individual player fan-bases. For these reasons, branding has become central to sports stars’ earning power. It is widely speculated, for example, that Cristiano Ronaldo and Lionel Messi each earn US$21 million annually through endorsement.

Legal context

It is easy to see why sports personalities want to register trade marks. Trade mark registrations are comparatively easy to monitor and enforce and create a monopoly right for the owner over the mark that has been registered. Having said that, it should be noted that this wave of registrations will not prevent people impersonating the signs of the registrants – there will be no grounds for claims against children pulling off Usain Bolt’s lightning bolt pose after winning the 100m at sports day; or football fans replicating Gareth’s Bale’s eleven of hearts sign in celebration at the Estadio Santiago Bernabéu.

So how does trade mark registration work? First and foremost, the mark must do what it says on the tin and act as the mark of trade, i.e. indicate the origin of the marked product. In the early days of these recent registrations, it is difficult to see how this will work in some cases. For instance, at the time of writing, we are yet to see examples of products wielding Mo Farah’s logo as a badge of origin. A t-shirt depicting his silhouetted ‘mobot’ pose is, arguably, not necessarily attributable to Mo Farah’s merchandising company – rather, it is simply a t-shirt with a Mo Farah picture on the front (a mere image carrier). When the rock band Linkin Park attempted to register their name as a trade mark in relation to the sale of posters, they failed in that context as the name would be merely descriptive and non-distinct. The illustration provided by the Registry was that a person asking a shop assistant for a “Linkin Park poster” is describing the characteristic of the goods, rather than specifically requesting a poster distributed by the band itself. This is likely to be the case in relation to a ‘Mo Farah t-shirt’.

However, others are already proving that gestures and poses can be workable trade marks. It is clear from Usain Bolt’s website that his ‘people’ are switched on to the use requirements of a trade mark registration: his ‘lightning bolt’ logo is featured at the bottom corner of each web page with the registered trade marksymbol. Gareth Bale’s mark, with the inclusion of the number 11, is likely to work very well as a logo, acting as a figurative signature. His registration reflects plans to pursue a number of merchandising opportunities, covering goods including clothing, footwear and headgear. It should be relatively easy to attach his logo to these items as many footballers have with their own logos, with great success in the past.

Other than using trade marks for exploiting brands, sports personalities can use registrations to protect their image and reputation. Any use on goods or services without consent by a third party of an identical mark or one that is similar, and being used in relation to similar or identical goods, will be grounds for a claim of trade mark infringement which, if successful, can lead to an order for damages, account of profits, destruction of the goods in question and injunctions to prevent such use in the future. Without such a registration, any dishonest commercial use of a sports personality’s name or signature pose, for example, will only be remedied with a successful claim for passing off under UK law. This action is notoriously difficult to pursue and is renowned for irregularity in decisions. Having said that, the action, which was first brought in relation to the use of a celebrity name as false endorsement in 2003 by the racing driver Eddie Irvine, was successfully pursued by the pop singer Rihanna against Topshop in September, for using her image without consent on a line of t-shirts. It should be noted that sports and other personalities may not have such luck in future claims, however, as this involved a specific set of circumstances. Rihanna had, alongside her music career, a sufficient reputation though her various business ventures in the fashion industry, including previous endorsements of Topshop clothing lines, for the existence of a likelihood that the public would confuse these t-shirts as being endorsed by Rihanna. Without such specific circumstances, it is growing ever more important for people in the public eye to protect their commercial interests with registered trade marks.

Conclusion

The world of branding in sport is constantly evolving and becoming more and more lucrative. Athletes, by creating their own merchandising companies and exploiting their commercial potential, are increasingly becoming brands in their own right. The value in a well-known name or, more recently, a well-known pose is astounding and, as with any business, an athlete would be well-advised to protect it.