Actions by a player both on and off the court can therefore affect their brand value. Boris Becker is one of Germany’s leading sports personalities, but his tangled personal life and, more recently, a prison sentence imposed following a bankruptcy scandal have done much to bring his personal brand into disrepute. Speaking in court, Becker’s barrister Jonathan Laidlaw QC said that his client’s “fall from grace” had “left his reputation in tatters”, while Becker himself has claimed that bad publicity has damaged his brand to the extent that it is difficult for him to make enough money to pay his debts.
Despite having been the player who has held onto the No.1 ranking for the longest period in men’s tennis history, Novak Djokovic’s personal choices have also impacted on some brands’ willingness to partner with him. In January 2022, after he was deported from Australia ahead of the Australian Open due to his refusal to obtain a Covid-19 vaccination, Peugeot decided not to renew a sponsorship agreement first entered into in 2014 with the Serbian star. The brand has not given a reason for its decision.
Current world No. 1 Daniil Medvedev is a player who is very brand conscious, and who is continually seeking to improve and build his brand. Medvedev told Forbes that he puts a lot of thought into the offers he accepts, choosing brands that he personally enjoys and focussing on establishing long-term relationships with them. The player realised early on the importance of capitalising on his success, noting that the higher the ranking he obtained the more influence he was likely to have on choosing the sponsorship deals that best reflect his brand.
Maximising return on brand value
Of course, not everything is in the hands of the player. While some on- and off-court behaviours are within the individual’s control, other factors – an unfortunate injury toppling a player from their career trajectory or, as we have seen in the lead-up to Wimbledon, Russian and Belarussian players being barred from certain tournaments – can also impact brand value.
This makes it all the more important for players to take whatever steps are within their control to capitalise on, and protect, their brand names.
What can be protected?
The first step is to consider what elements of your brand can be protected. Protecting a player’s name might be obvious, but consider whether the same protections should be extended to relevant variations: full name, first or last name only or even initials. Roger Federer’s ‘RF’ initials, registered as a logo, have become one of the most famous trade marks in tennis, and are instantly recognisable and help to sell apparel around the world.
In what contexts?
A player may naturally want to protect uses of their name for sports and entertainment services, and clothing and apparel may be another logical extension. However, depending on the interests of the individual player, other categories may be relevant. Outside of tennis, David Beckham is a prime example of a sports star who has capitalised on his brand: he and his wife Victoria have obtained registrations in respect of a broad range of additional goods and services including perfumes, technology and eyewear, jewellery, clothing, bags and food and drink services. In addition to trade marks, domain names incorporating a player’s name should also be considered.
Where should the brand be protected?
Intellectual property is territorial in nature, and registrations should be obtained in all countries where you intend to be active under a particular brand. This may be challenging for an individual player who is not yet widely active as a brand name. While filing a single application may not be prohibitively expensive, expanding protection globally certainly can be.
Are trade mark clearance searches necessary?
Depending on the player’s name or the branding element to be protected, it cannot just be assumed that a name will be available for use in relation to all goods and services simply because it is a person’s name. This may be a particular issue where a name is relatively common (e.g. Dan Evans) or where, like Roger Federer, you are seeking to protect initials only.
When should you seek protection?
Consider brand protection at an early stage of your career and file applications early. It is not unusual for opportunistic third parties to potentially beat you to registration and, as a recent case shows, the UK Intellectual Property Office (UKIPO) will not automatically block third party applications to register the names of famous sportspeople as trade marks. The earlier you act, the better – registering a trade mark gives the owner exclusive rights to deal with it as desired.
Who should own the rights?
There are many options for ownership of IP rights. Applications can be filed in the name of the individual or a management company, or a separate company could be established to hold these rights. Going back to Roger Federer’s RF logo, this was actually owned by Nike until this spring, when Federer’s long standing sponsorship deal with the brand came to an end. Speaking after regaining the rights, Federer said that the logo was important to his brand and that he was keen to retain ownership of the mark after it reverted to him.
Maintaining your rights
Registering trade marks is only part of the process, as in most jurisdictions trade marks become vulnerable to cancellation if they are not used. For successful players, maintaining a trade mark should not be a major issue. However, as there will be room to engage in sponsorship and brand licensing deals, players should be careful to ensure that the benefits from use revert to the individual under any agreements. Just because a name belongs to a celebrity does not provide them with an indefinite right to use it in relation to all goods and services applied for.
Monitoring and enforcement
Of course, for brand protection to be effective, it is crucial for the player to engage someone to monitor usage of their brand in all channels. There are many surveillance options available including trade mark, domain name and company name monitoring and social media monitoring.
Co-written by Stuart Mill of Pinsent Masons.