What is a trade mark?
A trade mark is a sign that distinguishes the goods and services of one entity from another. A trade mark registration gives you a monopoly right to use that sign, so it must be distinctive and not something that is descriptive and in common use (for example, a word that describes the characteristics of a product).
Why register a trade mark?
That monopoly right means you can stop others from using the mark. It is a proprietary asset that allows you to monetise your mark, for example through a licencing arrangement. Without a registered trade mark, you have to rely on unregistered rights, which are difficult to establish and defend.
Trade marks and footballers
It is not unusual for footballers to have lucrative arrangements in place, which involve the use of their name (or other words, phrases or images associated with them) such as sales of merchandise and collaborations with top designers or brands. By having a registered trade mark, the footballer has more leverage when it comes to the contractual arrangements, for example in relation to the royalty payments that are negotiated. It also allows the footballer to maintain control over how their trade mark is used.
Their trade marks allow them to develop their global brand on their terms.
Examples of football-related trade marks
David Beckham and Lionel Messi own portfolios of trade marks including BECKHAM, DB07 or LIONEL MESSI, LEO MESSI and associated logos.
Marcus Rashford has also started to develop his trade mark portfolio with (amongst others) registrations for MARCUS RASHFORD and a logo
Registered trade marks are territorial rights, so they can only be enforced in the jurisdictions they are registered in. It is therefore important to consider the key markets for your brand, which is why many footballers register trade marks globally.
Image rights are, as the name suggests, the right of an individual to protect their image. It is the right to prevent unauthorised use of their name, nickname, voice, signature, initials, social media handles, avatar etc – essentially, anything that identifies them personally.
Where a footballer’s name or image is attached to products, this implies they have approved of or endorsed the product – a problem if they have not approved this, because it can lead to a reduction in licensing royalties and damage to their reputation, especially if they are associated with inferior or inappropriate products.
Trade marks go a long way to protect a footballer’s image rights.
Importance of trade marks for other sports stars
Of course, it is not just footballers that understand the need to protect their brand and image. Merchandise, promotion and sponsorship deals can often earn a sports star more money than their wages and stars such as Lewis Hamilton, Usain Bolt and Roger Federer all have equally impressive trade mark portfolios.