Out-Law Analysis | 25 Aug 2022 | 10:11 am | 9 min. read
Athletes, tournament organisers and event sponsors should consider all elements of their sports brands and determine whether and how those brands could be protected to add value to their image.
The US Open taking place at Flushing Meadows provides an opportune time to consider how trade mark protection, which can provide scope for generating revenue, might be obtained for unconventional elements of a brand in the world of tennis – and sport more generally.
The success of any brand depends on its ability to distinguish its products and services from those of its competitors and to make them instantly recognisable to consumers. The name and logo of any brand are often the main features consumers come to identify a brand by, however, brand owners are increasingly seeking to exploit other branding elements that have potential to add value to a brand and provide opportunities for commercialisation.
Trade marks can help add significant value to a sports brand – not least because, unlike copyright and design rights, trade mark rights can exist in perpetuity provided they are not successfully challenged and renewal fees are paid on time
In order to be registrable as a trade mark, the sign for which protection is being sought must fulfil certain criteria. Most notably, it must be distinctive and non-descriptive of the goods and services applied for. Further, the aspects for which trade mark protection is being sought cannot be merely functional.
While acquiring registered trade mark protection for non-traditional elements of a brand is difficult, there are examples from tennis and other sports which show how it can be done, particularly if brand owners can prove that the relevant public has come to identify those elements as originating from them. Usain Bolt is the latest global sports star to file a trade mark application.
In tennis, undoubtedly the most historic and iconic colour scheme is the dark green and purple which has been associated with the Wimbledon Championships for more than 100 years.
For many years, The All England Lawn Tennis & Croquet Club has faced numerous issues in relation to preventing the unauthorised third party use of their signature colours. In 2016, the club was successful in registering two colour trade marks – for both a vertical and horizontal green and purple stripe – in the UK. Prior to then, the club had to rely on the law of ‘passing off’ to prevent third parties from piggy-backing on the goodwill of the Championships by using those colours to imply an association with Wimbledon, when no such association existed.
There is a reluctance by trade mark registries to grant entities monopoly rights to a single colour, but colour combinations – as the Wimbledon example shows – may be protected more readily, provided that they are identified clearly and precisely, for example by reference to an internationally recognised colour system such as Pantone, and are systematically arranged in a predetermined and uniform way.
A colour scheme that departs significantly from the norms and customs of the sector can be distinctive and distinguishable enough to obtain trade mark protection. However, generally speaking, unless there is something striking and unique about it, a trade mark for a colour scheme is difficult to obtain unless the public has come to recognise it as being associated with a particular undertaking. This is usually only achieved by providing extensive evidence proving that, through continued use of the mark, the relevant public has come to associate the colour or colour combination in question with the trade mark applicant.
In tennis, beyond the Wimbledon example, it is possible to imagine colour trade marks being registered for other uses of distinctive colours. For example, there is a strong case to suggest that the unusual black court associated with the Laver Cup could qualify for trade mark protection.
Hard court tennis events are typically played on blue or green-coloured courts, but Roger Federer, who organises the annual Laver Cup, has spoken about how the black court used at the event is “the centrepiece of a really cool, contemporary look over all that is such a big part of how people identify with the Laver Cup”. From a fans’ perspective, the black court is one of its most unique factors about the event other than its team format, and so the evidence that the mark is sufficiently distinctive to warrant registration should be available.
Perhaps the most relevant non-traditional mark to the sports sector is the motion mark. In particular, there is a sub-category of motion marks, known as gestures, that are unique identifiers of certain athletes. To be registrable, such motions would normally need to be quite short and repetitive and not be purely functional.
Numerous athletes have protected gestures considered unique to them. Usain Bolt, for example, has registered his “lightning bolt” pose as a trade mark under which he is able to sell merchandise. Similarly, rugby player Jonny Wilkinson trade marked his kicking stance, which gave him exclusive rights to sell goods marketed with that brand.
In tennis, Niclas Kroon was known for the ‘Vicht’ salute as a form of celebration and registered rights to an associated trade mark in 1988. Kroon held rights in the mark together with Mats Wilander. However, when they forgot to renew the registration, Lleyton Hewitt, who had adopted this symbol himself, took advantage and registered the mark for clothing and accessories.
Today, Rafael Nadal’s on-court rituals and tics – his jog back to the base line, the meticulous lining up of his water bottles and his pre-point routine, which involves towel-drying his face, bouncing the ball numerous times, adjusting his underwear and shoulders of his T-shirt, wiping the side of his nose, tucking his hair behind his ears and wiping his nose again – are instantly recognisable by the tennis fan as unique to Nadal.
There are other motions that are likely to be recognisable to tennis fans globally. These include Nick Kyrgios’ “trade mark” underarm serve, Black Panther’s ‘Wakanda forever’ salute that Gael Monfils performs in celebration of his victories, Novak Djokovic’s heart-throwing celebration to the four sides of the stadium or his ceremonial grass-eating each time he wins the Wimbledon Championships.
From a technical perspective, trade mark protection for some of those motions could be applied for by submitting video clips or a series of still photos or screen shots as opposed to a silhouette of a pose of body parts. The Bolt example is the latest in a definite trend of sports celebrities trying to trade mark gestures that are unique to them, and it may assist with increasing the value of merchandise items. Whether protection would ultimately be granted depends upon whether, in relation to the goods and services applied for, the gesture qualifies as a trade mark. It is highly doubtful, for example, that any one athlete would be granted a monopoly on something like an underarm serve motion, unless there was something particularly unusual about the execution of that serve.
In principle, a sound can be registered as a trade mark, provided it is sufficiently distinctive.
In addition to their strokes, their unique celebrations and their pre-point routines, tennis players can also be identified by the sounds they make on court. In 2019, the ATP Tour even asked some players whether they could identify their competitors by their grunts.
Even if tennis sounds are found to be sufficiently distinctive and distinguishable to an individual to qualify for trade mark protection, there is a wider question about whether there is commercial value in registering something like a grunt as a trade mark. Perhaps creative retailers could find a way to entice consumers to buy clothing or equipment used by players through sounds associated with those players. More realistically, while strictly speaking not considered a non-traditional trade mark or sound mark, some players are known for certain phrases. Most famously, anyone who knows anything about tennis will associate the words “You cannot be serious” with John McEnroe – a phrase for which the now-retired player did own trade mark rights.
There is another obvious example where a sound mark could be obtained in the tennis world. The BBC Wimbledon theme tune, used since 1976, “Light and Tuneful” by Keith Mansfield, could arguably attract more than copyright protection and qualify as a trade mark – perhaps at least for a section thereof like the first few seconds of the opening – given that many viewers of the Championships on the BBC would recall the tune instantly when thinking of the event. A similar case could be made for registering the UEFA Champions League anthem in European football, adapted from Handel’s Zadok the Priest, as a trade mark.
When it comes to shapes of products, trade mark registries will usually find that the shape on its own will not operate as a signifier of origin, attributing more weight to verbal elements that appear on the mark or perhaps a unique colour scheme
A particular challenge is that shape marks cannot be registered if they consist exclusively of the shape which results from the nature of the goods themselves, or the shape of goods which is necessary to obtain a technical result, or the shape which gives substantial value to the goods. It is therefore highly unlikely that any tennis equipment, as we currently know it, would attract registered trade mark protection.
However, it is possible to imagine that there could be other tennis-related shapes, such as the umpire’s chair and related accessories, that could potentially qualify for registered trade mark protection if they depart from the norms and customs of the sector. It is more likely, though, that elements like this would be protected by registered designs and/or copyright, not by trade marks.
Scent or smell trade marks are extremely rare. This is because it is extremely challenging to find a means of identifying scents or smells with the clarity and precision needed to support a trade mark application.
For example, while a representative code exists to help distinguish one perfume from another, the code is not intelligible to the general public and would not allow them to interpret the fragrance.
It is theoretically possible to submit a scent to a trade mark registry, but those scents deteriorate over time and would not be easily accessible to consumers.
Additionally, to qualify for trade mark protection, brand owners have to show that the relevant consumers associate the smell with the commercial entity producing the goods and the smell cannot directly relate to the nature of the goods and/or services applied for.
Famously, French company Eden Sarl failed to trade mark the smell of strawberries. The EU Intellectual Property Office determined, among other things, that the fact that strawberries don’t just have a single smell meant the smell Eden Sarl sought to register was not distinguishable enough to be eligible for trade mark protection.
It is possible to imagine a similar scent mark application in the context of tennis. A tennis ball manufacturer, for example, may be able to guarantee that all of their tennis balls would have the same smell and seek to trade mark that smell. The obstacle to registration in that example might lie in trade marking the ‘smell of tennis balls’ generally as, arguably, there are only slight variations across brands that make distinguishing between brands difficult. However, a Dutch perfume company successfully registered the smell of fresh cut grass for use in the manufacture of tennis balls in 1999.
Trade marks can help add significant value to a sports brand – not least because, unlike copyright and design rights, trade mark rights can exist in perpetuity provided they are not successfully challenged and renewal fees are paid on time.
However, protecting non-traditional brand elements is difficult, and there are significant costs of obtaining protection – especially if a brand owner needs to show evidence of acquired distinctiveness to support their trade mark application. This means that careful consideration should be given as to whether it makes sense to go down this route.
Trade marks are never protected generally but always in relation to particular categories of goods and services, so brand owners need to consider carefully how they plan to use a non-traditional trade mark, the purpose of any registrations and how, if successfully obtained, they would be commercialised. Thought should also be given to how third parties might seek to challenge successful registrations, even if trade mark applications are granted.
When protecting a brand, thought should also always be given to the role that intellectual property rights beyond trade marks could play, including registered and unregistered designs, and copyright.
Broad and comprehensive protection for a brand is desirable, but only of it makes genuine commercial sense. Brand owners should work with intellectual property experts to consider how to robustly, holistically and sensibly protect a brand.
Co-written by Stuart Mill of Pinsent Masons.
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