Examining trademarks for footballers and how a simple symbol can create a global icon.
Last month Gareth Bale successfully trademarked with the Intellectual Property Office the logo featuring the heart-shaped hand gesture that he performs after scoring a goal.
Bale’s celebration, the ‘Eleven of Hearts’, as it is now technically known, is part of alleged plans to turn the “current S*** winger” into a global brand. The registering of a trademark does not, as some have mistakenly suggested on various social media sites, mean that by copying the celebration during a five-a-side match or indeed at any other time, that you will be infringing upon Bale’s intellectual property and be liable to him for damages. Yes there are penalties under section 92 of the Trade Marks Act 1994 for the unauthorised use of a trademark but simply imitating the celebration with your hands will not give rise to a charge. All it means is that Bale is now able to use his new logo, as seen below, upon various pieces of merchandise.
Now some of you out there may think that this is a little ridiculous, to trademark a celebration, and a rather naff one at that I might add. However he is far from the first footballer to register a trademark in the hope of making money from it. Some of the greatest footballers of modern times have used their, or their advisor’s commercial nous, to increase their earnings by creating global brands of themselves.
Brand Beckham is perhaps the perfect example of this. By searching the Intellectual Property Office one can find a full list of Beckham’s expired and existing trademarks, including DB07, DB23, BECKHAM, the Beckham free kick logo, and perhaps most bizarrely SMOKEY BECKHAM, a still registered trademark for potato crisps.
Similarly Cristiano Ronaldo uses his CR7 trademark on a range of Nike football boots and sportswear and also has his name on his clothes boutiques in Portugal. Like Beckham, Ronaldo also uses his image to promote aspirational brands such as Armani among others. Even his biggest rival has got in on the act.
Lionel Messi previously unveiled his ‘personal logo that represents who I am as a player and person’ with logos like the above and by videos like the one below.
And if that was not enough to show that trademarks are big business for sports persons then even the phrase You’ve Been Frimponged has been registered by a certain company called Stay Dench Ltd.
Trademarks and brands are big money as I highlighted in a previous post here concerning the case of Arsenal Football Club plc v Matthew Reed which was a key case in establishing the rights of football clubs to enforce their intellectual property. Philipp Lahm, Cristiano Ronaldo and Andres Iniesta perhaps found out this the hard way in 2006 when several Chinese companies registering their names and nicknames as trademarks for their products. This resulted in products being made including a Lahm pesticide, a C Ronaldo flush toilet and Saint Iker jewellery.
“Among the 368 players in this year’s Euro Cup, 88 names have been registered as trademarks”
– Wu Zhaolong, Manager at Chongqing-based trademark agency Southwest Trademark Service.
There is, however, another reason why Bale and others would want to register a trademark a prospective brand and that is to make sure that the trolls do not get there first. A trademark troll is an entity that attempts to register a trademark without intending to use it but who then threatens to sue others who would intend to use that mark in the future.
The traditional troll from fairy tales was said to extort money from those trying to cross a bridge. In this instance the trademark troll will magically appear to extort monies from an unsuspecting person who attempts to adopt a similar mark. That person will then have to choose between paying the troll for a license to use the mark or to go to court and litigate the matter. So by registering the trademark Bale, and other sports persons, are able to create a brand and stop others from either making money off their celebrity and or stop trademark trolls and serious legal costs in the future.
So what is a trademark or brand?
Pursuant to the Trade Marks Act 1994 a trademark is a sign which distinguishes your goods and services from those of your competitors. You may in fact refer to a trade mark as a “brand”. A trademark can be for example words, logos or a combination of both such as in the case of Gareth Bale’s. Trademarks are acceptable if they are distinctive for the goods and services you provide. In other words they can be recognised as signs that differentiates your goods or service as different from someone else’s.
A brand has been described as a ‘promise of an experience’ and conveys to consumers a certain assurance as to the nature of the product or service they will receive. Intellectual property rights provide legal protection for some of the most important aspects of a brand. A brand can be a trade name, a sign, symbol, slogan or anything that is used to identify and distinguish a specific product, service or business. Brands are reputational assets based on powerfully held beliefs by the consumer.
Ok great. Can I have a trademark?
So now you know a little more about trademarks and brands and how they work. Perhaps you are even considering registering your own mark in the hope that you too may one day make it as a global superstar. Well just so we are clear the registering of a trademark is not as easy as jotting something down and handing it in to the Intellectual Property Office. Trademarks are not registrable if they:
- describe your goods or services or any characteristics of them, for example, marks which show the quality, quantity, purpose, value or geographical origin of your goods or services;
- have become customary in your line of trade;
- are not distinctive;
- are three-dimensional shapes, if the shape is typical of the goods you are interested in (or part of them), has a function or adds value to the goods;
- are specially protected emblems;
- are offensive;
- are against the law, for example, promoting illegal drugs; or;
- are deceptive. There should be nothing in the mark which would lead the public to think that your goods and services have a quality which they do not.
By going to the Intellectual Property Office website here you can see examples of what is and is not acceptable as a trademark.
‘Eleven of Hearts’
As for Mr Bale’s trademark? Well it is probably too early to say whether or not the ‘Eleven of Hearts’ will be a commercial success for Bale. Many have likened his earning capacity as being potentially as great as Cristano Ronaldo’s but that he may need to move to a larger club in order to maximise it. Only time will tell. What we can be sure of is that there will be plenty more sports persons registering their own trademarks over the coming years.
Oh and do feel free to run around imitating him the next time you score a goal…if you are that way inclined of course.
Celebrity and Trade Marks: the next instalment by Gillian Davies SCRIPT-ed Volume 1, Issue 2, June 2004
Gareth Bale ‘owns trademark’ to his goal celebration by Eurosport | World of Sport, 17 June 2013
Leo Messi unveils new superhero logo by Brooks Peck at Dirty Tackle Yahoo Sports
Top soccer players become trademarks by Zhang Zhao in China Daily June 2006
Disclaimer: The views expressed are those of the writer and this article does not constitute legal advice. For clarity Trade Mark and Trademark are interchangeable depending upon your region or jurisdiction but for ease of reference I have used Trademark in this post.