Our Sports Group has a long-established record of advising sports-related organisations including lottery distributors, sports administrators, national governing bodies, sports clubs, charities and trusts.
We work with sports organisations across numerous disciplines including tennis, shooting, ice skating, taekwondo, golf and ice hockey and represent a number of disability and Paralympic organisations.
In this issue:
How famous do you have to be to register your own name as a trade mark?
Footballers can achieve global stardom. Thousands of fans greeted Cristiano Ronaldo on a recent visit to China, and it is reported that he produces nearly $1 billion in value for his sponsors. However, such recognition arising just from your own name does not necessarily mean the path is easy to register that as a trade mark.
This summer Lionel Messi, one of the highest paid footballers in the world, won a seven year battle to trade mark his own name.
In order to be registered as a European trade mark, a name must pass several tests, including the 'likelihood of confusion' test. Registration will be refused if the name is similar to an earlier trade mark registered for identical or similar goods or services and there is a likelihood of confusion with the earlier trade mark.
Messi's original application to register his name as a graphic mark was challenged by cycling clothing manufacturer Massi, who argued that there was a likelihood of confusion between the two names. The EUIPO upheld the opposition and agreed that MASSI and MESSI were too similar, both phonetically and visually.
Messi continued the battle however and, this summer, the General Court agreed with him. Acknowledging Messi's global fame, the Court found that Messi was a well known public figure not just in the football world, but generally. A significant part of the relevant public would associate the name Messi with the famous footballer, and would perceive the term 'Massi' as being conceptually different. The extent of Lionel Messi's fame tipped the balance in his favour, despite the clear visual and phonetic similarities between the marks.
Messi's range of sports clothing is yet to be released, but the mark is already being put to good use on his website.
The battle does not end when the mark is registered; to maintain its value, stars must turn their minds to enforcement. When Cristiano Ronaldo looked to enter the US market with his brand CR7, battle lines had to be drawn with a Rhode Island businessman, who had already registered the CR7 combination in the US.
Nevertheless, what Messi has shown us is that, if you really are that famous, your name will be recognised despite its similarity to others, and traditional factors such as visual and phonetic similarity may lose their importance in the trade mark registration process. Quite where the line will be drawn, and how famous you have to be to negate the risk of confusion, remains to be seen.
A Code for Sports Governance
UK Sport announced earlier this year that it would be investing approximately £24 million into several Olympic sports ahead of the Beijing 2022 Winter Games. The sports organisations being funded will be expected to be fully compliant with the Code for Sports Governance ("the Code") by October 2018. So what exactly is the Code and what are some of the hurdles that organisations need to be aware of?
The Code sets out new levels of accountability and transparency which sports organisations who request funding from UK Sport and Sport England must now adhere to. The requirements of the Code are split into three proportionate tiers; the higher the funding an organisation is requesting or is in receipt of, the higher the number of requirements they must comply with.
It is clear that the Code continues to improve practice through offering a base upon which organisations can develop good governance. However, many organisations have been surprised by the amount of time it takes to become compliant. Newly compliant organisations have recognised that, especially initially, a lot of time and resources need to be allocated to working towards becoming compliant and dealing with the 'red tape' this involves. In particular, it takes time and extensive consideration to create a solution which sufficiently incorporates the Code's requirements, but still reflects the spirit and working operations of the organisation in question.
To view the full article click here
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
