It is great to see the International Women's Day initiatives being announced; collaborative digital art drops between football clubs and artists to focus on and empower women; football kits inspired by Emmeline Pankhurst; global connected fitness initiatives and more.
Indeed a desire to “continue to raise the profile of women’s sport and encourage more commercial investment into women’s sport” as well as “Record breaking and innovative sponsorship deals" were just some of the comments from The Rt Hon Stuart Andrew, the Minister for Sport, talking recently at the Westminster Insight Conference on the future of women's sport. His speech can be read here. It captured some of the immense statistics and details around successes in women’s sport in terms of events, viewership and media profile of women’s sport.
Consistent with this, a recent article from Forbes highlights the increasing commercial value of celebrity names, particularly those of female sports stars - see our colleague, Ally Clark’s article here. It is clear that off-field revenue streams such as brand deals, product lines and broadcasting ventures are consistently eclipsing the on-field salaries earnt by leading female sports stars.
The steeply increasing value of celebrity names begs the question: how can these individuals protect their names from exploitation? The law is somewhat unclear in the UK especially where registered trade mark protection for celebrity names is not obtained. This is because, with no codified laws protecting what we collectively refer to as “image rights” a patchwork of protections need to be relied upon. (Clearly “image rights” also encompasses far more than just a celebrity’s name, it can be anything from their signature, silhouette, their face, personal brand, famous phrase etc, and also engages other forms of rights in addition to trade marks, such as copyright and issues around data protection, privacy etc,. We are just considering trade marks in this article.)
Where a celebrity has a registered mark for their name, they will be notified by the UK Intellectual Property Office (UKIPO) of applications that potentially conflict with their earlier registered trade mark rights and the registry then leaves them to decide if they want to take action. However, this role of the registry in the context of registered rights does not extend to earlier unregistered rights. See for example, this decision where it was held that the UKIPO could not refuse trade mark applications for logos containing the names of famous footballers. Only third parties, such as the named footballers, could raise a bad faith objection.
Trade mark protection is not without its hurdles. For example, Spanish footballer Lionel Messi came up against an earlier registration for the similar mark MASSI when he sought to register a European Union Trade Mark (EUTM) for his name. However, he did end up successfully registering the mark MESSI as an EUTM. The CJEU found that a person’s fame can counteract similarities between an earlier sign because the public will be more able to identify and distinguish the famous name from an existing similar mark.
A further recent development is the coming into force of The Trade Marks (Amendment) Regulations 2022, on 27 December 2022. These regulations broaden section 56 of the Trade Marks Act 1994 (“the Act”), which deals with the protection of well known trade marks.
Previously, section 56 as drafted only prevented third party registrations for identical or similar goods and services – no protection was afforded in respect of dissimilar goods and services. The previous protection also only protected residents of, or persons with a commercial presence in a Paris Convention member country – so UK trade mark owners were not protected as the UK is not party to the Paris Convention.
The new rules, therefore:
- Allow owners of well-known marks to prevent third parties from registering identical or similar marks in respect of dissimilar goods or services; and
- Extend protection of unregistered well-known marks to UK residents / domiciles.
It is worth noting that UK residents / domiciles did previously, and continue to be able to object to third party attempts to register marks where they can argue their mark has a reputation in the UK and “the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark” under section 5(3) of the Act as well as on the basis of unregistered rights on the basis of passing off under section 5(4)(a) of the Act. The changes to section 56 simply broaden the remedies available to UK owners of well-known trade marks.
Despite the new provisions and remedies effected via the Trade Marks (Amendment) Regulations 2022, the treatment of well-known marks and particularly celebrity marks can be uncertain, with registration often being the safest option for protection and enforcement of rights (assuming registrations can be secured).
As is clear from the minister’s speech, women’s sport and female athletes are becoming more and more prominent. This was made abundantly clear by the line-up of female players being recognised in BBC Sports Personality of the Year Awards.
This recognition will only rise with increased media attention, viewership and with the government looking to identify future events to support; including the 2025 Women’s Rugby World Cup and the 2026 Women’s T20 World Cup both to be held in England.
As such, with the inevitable rise in player brand value, careful consideration should be given to protecting and monetising brands and brand value. What better time to consider it with the explosion of generative AI; the increased prominence and broadening of proto-metaverse use cases and the new Nice classification, the international list of goods and services for trade marks, in force as of the end of January, now explicitly covering NFTs (as long as the type of digital item being authenticated is specified).