BY ATHENA CONSTANTINOU
Although some athletes are simply popular because of their sporting prowess and achievements, others have also leveraged their personality and notoriety by taking the time, trouble and expense of creating a personal brand that can be utilized for profit and influence. Throughout and beyond their playing careers.
Such a brand can be built in such a way as to transform the athlete into a local, national or even a global celebrity, and this can be leveraged to promote and sell products and services of major international companies in lucrative endorsement and sponsorship deals.
In turn, such leverage can help to maintain the profile of the celebrity and keep his/her name before the sporting and general public.
In order to achieve these results, a brand building programme, to suit the particular athlete and his/her sport, needs to be put in place and maintained, and this needs to be done at an early stage in the athlete’s sporting career.
One crucial element of any such programme is to register, as a trademark, the name or nickname of the athlete, which will repay dividends later and also help to protect his/her celebrity status, from a legal point of view. This is particularly true in Common Law jurisdictions, which do not legally recognize image rights per se. The same is also true and important in Civil Law jurisdictions, which do recognize and legally protect such rights. In those cases, having a registered trademark, adds value to the athlete’s sporting brand.
The need to have such trademark protection was recently well illustrated in a case involving the well-known footballer Neymar. An unrelated third party filed an application for the word mark NEYMAR as an EU trademark in respect of goods in class 25 of the Nice Classification, namely, clothing, footwear and headgear.
Neymar, therefore, filed an application, under the provisions of Article 59(1)(b) of the EU Trade Mark Regulation (EC) No 207/2009, for a declaration of invalidity of this trademark registration on the ground that it had been obtained in bad faith.
Cutting a long story short, the case went all the way up through the internal appeal procedures of the EU Intellectual Property Office to the EU General Court and Neymar’s application was upheld.
The Court held that the third party must have known of Neymar’s celebrity as a European footballer as well as his standing globally and that the application had been made to obtain a ‘free-ride’ on his notoriety and popularity, for commercial profit and gain. In other words, for a dishonest intention and purpose.
Of course, if Neymar had already registered his name as a trademark, he would not have had to rely on his notoriety and spend time going through all these legal procedures. It would have been a simple case of trademark infringement, with a relatively speedy result.
To read the judgement of the EU General Court in the Neymar trademark case, log onto http://curia.europa.eu/juris/liste.jsf?num=T-795/17.
Athena Constantinou may be contacted by e-mail at ‘athena@apc-sport.com’