Wimbledon is in full swing in sunny london! Yesterday we saw Angelique Kerber take the women's title and the men's final concludes this afternoon between Anderson and Djokovic. Defending champion Roger Federer only made it to the semi-finals, but no doubt keen IPKat readers would have noticed something different about his appearance when he stepped out onto Court this year.
Jacqueline Pang kindly provides us with the details of Federers new sponsorship deals and the trade mark issues involved. Jacqueline has worked as a trade mark attorney at Mewburn Ellis for the past 7 years. She is a big Federer fan but claims to hopeless at playing tennis... so she's sticking to the IP Court!
When Roger Federer stepped out onto Centre Court at Wimbledon this year as defending champion, there was a striking difference in his appearance: in place of the well-known Nike ‘swoosh’ on his shirt was a bright red UNIQLO logo.
Federer signed a deal with the Japanese brand after his two decades-long partnership with Nike came to an end earlier this year. However, there are still some outstanding issues. In his first round post-match interview he accepted that the RF logo that is associated with him is still ‘with Nike at the moment’.
In particular, Nike Innovate C.V. and Nike, Inc. are recorded as the owners of a number of trade mark registrations around the world for the logo (see here), predominantly covering class 25 goods. Presumably Nike also owns the copyright in the logo. On the face of it, they are therefore in a strong position to continue exploiting the mark and to stop third parties, including Federer and Uniqlo, from using it or a confusingly similar mark for clothing and related goods.
However, EU law provides for an 'own name defence' to trade mark infringement actions, provided the use of the name is 'in accordance with honest practices in industrial or commercial matters'. It is, however, questionable whether Federer would be able to successfully rely on it should he decide to press ahead with use of the RF logo or a confusingly similar mark without first resolving the situation with Nike. Firstly, it seems doubtful that Federer's use in these circumstances could be considered in line with 'honest practices'. It is also unclear whether the defence would stretch to cover the initials of one's name as opposed to a full name. Further, the rationale behind the defence is to prevent trade mark owners from prohibiting others using their own names to identify themselves; it seems unlikely to apply in the context of commercial transactions. Happily for Federer, he owns the trade mark registrations for his full name and so they are not in dispute.
There are echoes here of a line of European case law concerning fashion designers, notably Elizabeth Emanuel, who famously designed Princess Diana’s wedding dress, and Karen Millen. Both sold their eponymous businesses and were later prevented from using their own names in starting new ventures. Although those cases had different factual circumstances, they nevertheless reinforced the general principle that the same name can be separated into personal and commercial spheres, and that a name that has been used commercially is an asset that could be negotiated over and traded like any other good.
As always, much will depend on the contract between Nike and Federer. It may, for example, provide for how the ownership of the registrations and any goodwill in them would be determined upon termination. This episode also provides a lesson in the negotiation of contracts. Federer first signed with Nike in 1994, when he was a fresh-faced 13 year old. Few would have dreamt that he would go on to win 20 Grand Slam titles (and still counting) and be considered as one of the greatest players of all time. He has since become a brand in his own right. Clearly, when negotiating and drafting agreements parties should consider possible future scenarios and try to provide ways of dealing with them. Further, after an agreement comes into force, parties should continue to review it once in a while to see whether the terms remain appropriate or need re-negotiating or updating to reflect changed circumstances. This is particularly pertinent when the brand in question is a name, alias or nickname.
In his interview Federer seemed confident that the RF logo ‘will come to me at one point’. This may suggest there is indeed provision in the contract for the rights in the brand to be assigned to him or that talks are already under way. Alternatively, it may be a shrewd move to very publicly apply pressure on Nike and make sure that ‘sooner rather than later, Nike can be nice and helpful in the process’.
Federer may have realised that ultimately the legal position may prove irrelevant. He sums up the situation as “It’s also something that was very important for me, for the fans really … They are my initials. They are mine.” For his fans, the RF logo and the merchandise on which it appears are a personal and emotional connection with Federer and a public display of support. Nike may be in for a tough PR battle if it wishes to retain legal control of the brand: even if successful, it may be a Pyrrhic victory if it means alienating Federer’s passionate and loyal fanbase on whom the value of the brand presumably rests.
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| Love Match Credit: Bounder |
Jacqueline Pang kindly provides us with the details of Federers new sponsorship deals and the trade mark issues involved. Jacqueline has worked as a trade mark attorney at Mewburn Ellis for the past 7 years. She is a big Federer fan but claims to hopeless at playing tennis... so she's sticking to the IP Court!
When Roger Federer stepped out onto Centre Court at Wimbledon this year as defending champion, there was a striking difference in his appearance: in place of the well-known Nike ‘swoosh’ on his shirt was a bright red UNIQLO logo.
Federer signed a deal with the Japanese brand after his two decades-long partnership with Nike came to an end earlier this year. However, there are still some outstanding issues. In his first round post-match interview he accepted that the RF logo that is associated with him is still ‘with Nike at the moment’.
In particular, Nike Innovate C.V. and Nike, Inc. are recorded as the owners of a number of trade mark registrations around the world for the logo (see here), predominantly covering class 25 goods. Presumably Nike also owns the copyright in the logo. On the face of it, they are therefore in a strong position to continue exploiting the mark and to stop third parties, including Federer and Uniqlo, from using it or a confusingly similar mark for clothing and related goods.
However, EU law provides for an 'own name defence' to trade mark infringement actions, provided the use of the name is 'in accordance with honest practices in industrial or commercial matters'. It is, however, questionable whether Federer would be able to successfully rely on it should he decide to press ahead with use of the RF logo or a confusingly similar mark without first resolving the situation with Nike. Firstly, it seems doubtful that Federer's use in these circumstances could be considered in line with 'honest practices'. It is also unclear whether the defence would stretch to cover the initials of one's name as opposed to a full name. Further, the rationale behind the defence is to prevent trade mark owners from prohibiting others using their own names to identify themselves; it seems unlikely to apply in the context of commercial transactions. Happily for Federer, he owns the trade mark registrations for his full name and so they are not in dispute.
There are echoes here of a line of European case law concerning fashion designers, notably Elizabeth Emanuel, who famously designed Princess Diana’s wedding dress, and Karen Millen. Both sold their eponymous businesses and were later prevented from using their own names in starting new ventures. Although those cases had different factual circumstances, they nevertheless reinforced the general principle that the same name can be separated into personal and commercial spheres, and that a name that has been used commercially is an asset that could be negotiated over and traded like any other good.
As always, much will depend on the contract between Nike and Federer. It may, for example, provide for how the ownership of the registrations and any goodwill in them would be determined upon termination. This episode also provides a lesson in the negotiation of contracts. Federer first signed with Nike in 1994, when he was a fresh-faced 13 year old. Few would have dreamt that he would go on to win 20 Grand Slam titles (and still counting) and be considered as one of the greatest players of all time. He has since become a brand in his own right. Clearly, when negotiating and drafting agreements parties should consider possible future scenarios and try to provide ways of dealing with them. Further, after an agreement comes into force, parties should continue to review it once in a while to see whether the terms remain appropriate or need re-negotiating or updating to reflect changed circumstances. This is particularly pertinent when the brand in question is a name, alias or nickname.
In his interview Federer seemed confident that the RF logo ‘will come to me at one point’. This may suggest there is indeed provision in the contract for the rights in the brand to be assigned to him or that talks are already under way. Alternatively, it may be a shrewd move to very publicly apply pressure on Nike and make sure that ‘sooner rather than later, Nike can be nice and helpful in the process’.
Federer may have realised that ultimately the legal position may prove irrelevant. He sums up the situation as “It’s also something that was very important for me, for the fans really … They are my initials. They are mine.” For his fans, the RF logo and the merchandise on which it appears are a personal and emotional connection with Federer and a public display of support. Nike may be in for a tough PR battle if it wishes to retain legal control of the brand: even if successful, it may be a Pyrrhic victory if it means alienating Federer’s passionate and loyal fanbase on whom the value of the brand presumably rests.
Federer and Nike trade mark dispute in centre court
Reviewed by Hayleigh Bosher
on
Sunday, July 15, 2018
Rating:
Reviewed by Hayleigh Bosher
on
Sunday, July 15, 2018
Rating:
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Posts
What copyright?
ReplyDeleteThe logo is with Nike, but the goodwill is clearly with Roger. Could Nike, therefore, still use the TM they rightfully own?
The logo is to a specific graphic and not simply to Roger's initials. He may be able to use his initials in a different design, unless, but that might be difficult.
This would make a very interesting court case, and would make the lawyers a lot of money. However, if Nike have no legitimate use for the mark anymore, they may as well let Roger have it back. He helped their brand enormously on Nike's way up. They could easily damage it by fighting too hard.
Copyright in the creation of the logo itself, e.g. Nike designed it (or paid someone to do so).
ReplyDeleteI'm interested why you think the goodwill vests in Roger given that he actually doesn't sell any items, items were sold by Nike with him as an endorsing celebrity - I think that's a step too far. Roger may have substantial 'goodwill' in the non-legal sense, but the commercial goodwill (e.g. attractive force) must accrue to Nike as they manufacture, produce and sell the items bearing the stylised RF logo.