WTR has previously tackled the advantages and pitfalls of working with celebrities in product endorsement deals. But what of the celebrity perspective? In the week that soccer’s former Tottenham midfielder Gareth Bale broke the world transfer record following his £85.3 million (€100 million) move to Spanish La Liga side Real Madrid, WTR considers how best to commercialise a brand like Bale.

Prior to his move, Bale has already acquired trademark rights relating to his well-known goal celebration with the UK IP Office (UKIPO), and has moved for similar CTM protection. The UK trademarks are for text displaying the words ‘Eleven of Hearts’ and the text used in conjunction with an image of a heart with the number 11 inside, representing the squad number assigned to Bale at Tottenham and now also at Real Madrid. Bale has also had CTM applications for the GARETH BALE and the ELEVEN OF HEARTS marks published. The trademarks apply to a range of products including jewellery and accessories, as well as clothing.

Considering the advice he would give to sports personalities like Bale, Chris McLeod, director of trademarks at Squire Sanders, believes that the most important thing is to imagine where the client would want to be in a few years in terms of potential licensing and shape the coverage of the trademark on that basis: “Our first recommendation would be to go as broad as possible primarily on the basis that you can’t subsequently widen the scope of an existing application or registration. The scope of potential merchandising can be quite broad and could well go beyond the three classes covered by Bale’s applications. You do get to a stage where there are classes that have no possible relevance for someone like [Bale] such as chemical products, but you could see a footballer licensing and endorsing something like aftershave or soft drinks and foods. There are several additional classes that are potentially of interest, but the cost does increase as you add classes. It would come down to how much the client wanted to spend on it.”

Bale’s reported salary of £300,000 a week would stretch to a fair number of registrations if desired, but John Olsen, partner at Edwards Wildman Palmer, would urge caution: “You can go over the top. At one point, you could get anything you care to name with the Pierre Cardin brand on it. Because of the unrestricted proliferation of items with Pierre Cardin on it, the brand lost value. What you want to do is enough to drive demand, but not so much that it is readily available and becomes not worth very much. There is a balance to be struck.”

European football is now global. Olsen believes that arguably the most fervent fans are in Asia, so Bale would need to register in those jurisdictions, and quickly: “If jurisdictions such as Australia, China and Japan are important markets for him, then he needs to get there first before some opportunist does – it is first past the post so he needs to do this fairly sharpish.” McLeod adds that Bale should also register the trademarks in South America, particularly given the popularity of La Liga in Spanish speaking countries.

Both agree that social media will be key if Bale wishes to promote his brand effectively, although McLeod says Bale is well placed to maximise such opportunities: “His Twitter account has 1.5 million followers so is basically a free place for him to promote the brand. He’s already received a lot of free media coverage just by registering the trademarks.”

There are of course obstacles for Bale and his advisors when trying to create a brand. McLeod wonders whether the ELEVEN OF HEARTS word mark will have great resonance with the Spanish-speaking public, arguing that “the figurative mark may be worth more. Having the purely figurative mark will get over the linguistic barrier and may be the one to promote”.

Olsen believes that Bale is already a brand and he needs to ensure that there is proper policing of this, especially at the beginning. He also needs to maintain a positive image. “There are other brands that have fallen foul, names like Tiger Woods, Lance Armstrong and Alex Rodriguez that are all personal brands as well. Once your brand is tarnished, usually from your own behaviour, sponsorships can be cancelled. He needs to continue to ensure his brand is desirable.”

While there is a trend towards celebrities trademarking their name and launching new products (such as Maria Sharapova and her Sugarpova line of premium candy), history would suggest that it is far easier for a sportsperson to be associated with pre-existing brands (such as footballer David Beckham’s tie-up with Armani), than to create and license their own products. Bale is certainly well placed to tap into the expertise and infrastructure of other brands given the profile afforded by being both the ‘world’s most expensive footballer’ and a star player at Real Madrid, the world’s most valuable sports team.

All that being said, could Bale be different? Could he help herald a new era of new trademarks being registered and commercialised by sports personalities? McLeod thinks not: “It doesn’t strike me as the tipping point of sports people protecting their brand.” However, the move to trademark his name is a canny one, with McLeod noting: “Most celebrities’ names are their core brand.”

Olsen agrees that Gareth Bale has made a commercially savvy move: “Thanks to the Internet and social media, ‘universal individuality’ as commercial concept is underscored. The world has truly become a global village and celebrity within the village is now only a keystroke away. This phenomenon is not just limited to sports personalities and is something that is going to become more and more common. Social media has really driven the enormous value placed on the personality and celebrity of particular individuals.”

Should other sporting personalities continue on the trend of protecting names and related marks to capitalise on the cult of personality, there will certainly be an opportunity for law firms to offer their trademark expertise to advisors who know the world of sports well, but the intricacies of trademark strategies somewhat less.

This blog was first published in World Trademark Review on 6 September 2013

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