What's in a name?

Posted in Intellectual property

Co-authored by Tom Maturi

Professional athletes engaging in sponsorship and endorsement agreements with large corporations is hardly a recent phenomenon. Athletes who are extremely successful in these endeavours, however, almost inevitably establish their own “personal brands”, as well as supporting their company’s wider brand. For instance, Cristiano Ronaldo has become synonymous with the “CR7” brand.

Athletes with strong personal brands bring considerable value to sports teams, tournaments and sponsors themselves. Conversely, many popular athletes benefit from hugely lucrative sponsorship agreements during, and even after, their careers. For instance, Roger Federer has reportedly won US$116 million in prize money during his career and this figure is undoubtedly dwarfed by his off-court earnings from endorsements and sponsorships. Indeed, his new ten-year sponsorship deal with Japanese clothing company Uniqlo is reportedly worth US$300 million and Forbes reported that, in 2018, he earned US$12.2 million from “salary and winnings” versus US$65 million from “endorsements”[1]

However, whilst often mutually beneficial, the development of personal brands can, on occasion, bring with it some difficulties, particularly in relation to the use of personal names.

The use of an athlete’s name or initials can give rise to an interesting point of discussion. On the one hand, they “belong” to the athlete, however, sponsors often also invest a lot of time, effort and money into building athletes’ profiles and their personal brands. This raises the question as to how much each party should be able to benefit from the investment in this personal brand during the life of the sponsorship agreement and, perhaps even more importantly, when it ends.

Although outside of sport and sponsorship agreements, high profile designers Karen Millen and Elizabeth Emanuel have previously been involved in disputes highlighting the general principle that, when used commercially, names can be bought and sold in the same manner as other assets. In these instances, the designers had sold and assigned the intellectual property rights to their names respectively and, following this, they were unable to use their names for commercial purposes. 

English trade mark law, however, states that “a registered trade mark is not infringed by the use by an individual of his own name”[2]. Previously, corporations were able to use this defence, although the recent trade mark reforms amended this only to apply to “individuals”. The use of the name also must be “in accordance with honest practices in industrial or commercial matters”[3] and, in the event that there is a commercial agreement permitting a certain trade mark’s exclusive use, even where that mark is the sports person’s name, it is highly unlikely that an athlete would be able to rely on this.

Additionally, in the event that a sponsor continues to use a trade mark containing an athlete’s name or initials after its sponsorship agreement with the athlete has expired, under English trade mark law, an athlete could potentially claim that the registration of a personal brand mark (in the hands of the sponsor) should be revoked as its use by the registered proprietor (in this case, the old sponsor) is “liable to mislead the public”[4]. The use of the trade mark could potentially misrepresent that the product is endorsed by the athlete. A claim for passing off (or infringement of other marks) might also be brought.

Of course, the more significant the value that an athlete brings to a partnership, the more leverage they will have. Where a personal brand is being developed, athletes and sponsors alike should discuss and contractually agree who owns the rights that will be developed at the outset of their relationship to avoid any later disputes. 

We have previously discussed managing conflict between individual endorsements and team sponsorship agreements in an article in August 2018.

 

[1] https://www.forbes.com/profile/roger-federer/?list=athletes#1763756814ba

[2] Section 11(2)(a), Trade Marks Act 1994; Trade Marks Regulations 2018/825 Pt 2 reg.12(4)

[3] Section 11(2)(a), Trade Marks Act 1994

[4] Section 46(1)(d), Trade Marks Act 1994

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