Yannick Noah case highlights athlete brand longevity challenge

Désirée Fields of Pinsent Masons was commenting ahead of a forthcoming ruling by the EU’s General Court in a case in which Yannick Noah, winner of the 1983 singles and 1984 doubles at the French Open, is seeking to maintain EU trade mark rights he first registered in 2008. 

The ‘Noah’ figurative mark was originally registered to cover a wide range of goods under three different classes of the Nice Classification system for trade mark applications. The trade mark covered, for example, leather and imitation leather goods, clothing, including polo shirts and sweaters, as well as games and toys.

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In 2019, however, New York-based clothing company, Noah Clothing LLC, applied for the mark to be revoked in respect of all the goods it had been registered for. Noah Clothing argued that there had not been ‘genuine use’ of the mark in the EU in the previous five years and that that provided grounds for the mark’s revocation under EU trade mark law.

In response, Yannick Noah provided an array of evidence, including copies of licensing agreements, sales revenues, and articles, press releases and other published product information, that he claimed proved use of the mark in that period. However, in 2021, the cancellation division of the EU Intellectual Property Office (EUIPO) largely upheld Noah Clothing’s revocation application but held that Yannick Noah’s trade mark rights did continue to apply in respect of ‘sport casual shirts’ under class 25 of the Nice Classification system.

Both Yannick Noah and Noah Clothing appealed the cancellation division’s decision. In 2022, the First Board of Appeal of the EUIPO rejected Noah Clothing’s bid to extend revocation to all goods for which the Noah mark had been registered but also further refined the scope of Yannick Noah’s trade mark rights – it considered that the former tennis player had proven genuine use of the mark with respect to the goods ‘polo shirts’ as a sub-category of the registered term ‘shirts’ in class 25 and the goods ‘sweaters’ as registered in class 25.

Noah Clothing lodged an appeal against the appeal board’s decision before the EU General Court, again arguing that revocation should extend to all the goods the trade mark was registered for. The General Court is due to rule on that appeal on Wednesday 24 January 2024.

Désirée Fields said: “Prominent sportspeople are increasingly cultivating a brand during their athlete years that they can continue to commercially exploit into retirement. Roger Federer is perhaps the best modern example of this in tennis, while the wider sports branding industry will be watching with interest for what Tiger Woods’ next move will be, as owner of the iconic TW logo in golf, following his recent split from Nike.”

“In the Yannick Noah case, it is not surprising that the trade mark rights in question are hotly disputed, given the revenues Yannick Noah can derive from maintaining the brand and the competing interests Noah Clothing have in clearing the way to freely market clothes in Europe bearing their name,” she said.

“Notwithstanding what the General Court rules, the history of this case highlights the risk athletes face of losing trade mark rights if they do not put those marks to ‘genuine use’ in respect of the goods or services for which they were registered. In tennis, John McEnroe famously registered a trade mark for the ‘You cannot be serious’ phrase he is synonymous with in the US in 2006 to apply to t-shirts under class 25 of the Nice system, but he subsequently lost the rights in 2014 after he did not submit a declaration of use,” she said.

“Athletes should think carefully about the scope of trade mark rights they will need now as well as in the future to ensure there is appropriately targeted specification of goods and services in the trade mark application. They should in tandem develop a strategy to ensure ‘genuine use’ is made of the trade mark rights thereafter,” Fields said.

A ruling by the High Court in London last year neatly summarises the principles established in case law pertaining to determining if there is ‘genuine use’ of a UK or EU trade mark. To date, post-Brexit, the courts in the UK have not diverged from the EU case law that has been established on the point.

That ruling confirmed, among other things, that ‘genuine use’ cannot arise from “merely token” use of a trade mark by the owner of the mark or another authorised third party rights holder; from internal use of the trade mark; or from the distribution of promotional items as a reward for the purchase of other goods and to encourage the sale of the latter.

The court highlighted that the use must relate to goods or services which are already marketed or which are about to be marketed and for which preparations to secure customers are under way, particularly in the form of advertising campaigns, and be by way of real commercial exploitation of the mark on the market for the relevant goods or services, but confirmed use does not always need to be quantitatively significant for it to be deemed genuine. While use needs to be proven in the territory where the mark is registered, it may be possible in some cases to demonstrate ‘genuine use’ of an EU trade mark if the mark has only been used in one EU member state. Every case needs to be considered on its particular facts and in its particular context.