Protecting your own brand name if you’re a real life superhero

Although the applicant later withdrew the application, it highlights the importance of acting quickly to protect an up and coming brand name. Such action is particularly important when the brand that needs protecting is your own name, which is often the case for athletes and sports stars.

There is no denying that featuring an athlete or sports person in a marketing campaign or as a “brand ambassador” can be an invaluable promotional tool for any corporation and, as a result, more and more sports stars are becoming valuable brands in themselves. The commercialisation of athletes through licensing, endorsements and sponsorship is a valuable and lucrative business and, like with any lucrative asset, failure to appropriately protect the asset could result in costly legal disputes or losing the asset altogether. Obtaining a trade mark registration for an athletes’ name, catch phrase or nickname is therefore a key first step in protecting the commercial value in their brand.

By obtaining such a registration the owner can take action against any unauthorised use by a third party for the same goods or services for which the trade mark is registered. The individual will then have some control over the use of their name and can more easily begin to profit from licensing arrangements.

Unfortunately, in some circumstances, obtaining a trade mark registration will not be straightforward, particularly if the sportsperson is already well-known. In 2005 Sir Alex Ferguson applied to register his own name in ‘class 16’ for printed matter such as photographs, posters and stickers. The application was rejected in respect of “image carrier” goods such as transfers, stickers and other image-bearing printed matter on the grounds that the sign had no distinctive character and is likely to be interpreted as merely descriptive of the subject matter of the goods (for example posters, stickers, etc. of Sir Alex Ferguson). In such circumstances, an individual may still be able to rely on the law of passing off, but, as detailed above, obtaining a trade mark registration is the preferable position.

As a result, although it is important to attempt to secure a trade mark registration as soon as possible, individuals also need to carefully consider the details of their application. In particular what goods/services should be covered by the trade mark registration and in what territories registration should be sought.

If you have any questions on how best to protect the commercial value in your brand or wish to discuss a trade mark filing strategy please contact Blake Morgan’s Intellectual Property Team.