Trademarks in sport

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A strong brand, and trademark protection, create business value.  Indeed, intellectual property can become a company’s most valuable asset. 

Branding in sport is big business.  Branding issues affect the titles of sporting events, the names of participating teams, the venues where the events take place, as well as the players themselves.  Branding considerations are also key to event sponsors.

June and July saw The Championships at Wimbledon take place, and we explore two trademark issues that affect the oldest tennis tournament in the world, and one of the most important events in the sporting calendar.

Recap on trademarks

A quick recap on trademarks.  Trademarks are signs that enable consumers to distinguish between one supplier and their competitors.  Trademarks build trust, loyalty and confidence in the goods and services on which they are used.  Trademarks can also generate goodwill, and products displaying trademarks can command premium prices.

Trademarks can include words, logos, colours, shapes, sounds, smells, and holograms.

Registering a UK trademark gives the owner the exclusive right to use their mark in the UK and makes it easier and cheaper to stop third parties who adopt the mark, or a similar mark, without permission.  UK trademarks are registered at the Intellectual Property Office.

Trademarks registered by The All England Lawn Tennis Club

Wimbledon is a suburb in south-west London, yet it is also a registered trademark of The All England Lawn Tennis Club in the European Union. 

How is it possible to register a place name as a trademark?

A trademark, to be registrable, must be distinctive and capable of distinguishing the goods and services of one business from those of other providers.  Trademarks can be refused if they consist exclusively of signs that designate the place of production of the goods for which protection is intended or the place where the relevant services are provided.  WIMBLEDON has been found to be registrable in the EU on the basis that it is not a pure indication of geographic origin for goods and services related to the well-known tennis competition, and it is unlikely that consumers will see products labelled WIMBLEDON as anything other than a trademark.  That has not stopped some of the marks from being challenged, however.

The All England Lawn Tennis Club would also have the right to exploit the name WIMBLEDON by virtue of their use going back over 100 years and the reputation they have built up in the mark, although this would be much more complicated than relying on their registered trademarks.

The term WIMBLEDON is not just registered for sporting events.  As Wimbledon is necessarily associated with the manufacture of lots of products, it is registered for a wide array of goods and services.  18 categories of goods and services are protected across the European Union, including food, flowers, cosmetics, garden furniture, bed linen, spectacles, and umbrellas.

The All England Lawn Tennis Club have around 40 trademarks that cover the UK, including their famous logo for “THE CHAMPIONSHIPS, WIMBLEDON” and the purple/green colour combination.

These trademark registrations show how important merchandising is to the Club.  The registrations allow the Club to generate funds by licensing their intellectual property to a wide variety of product manufacturers.  According to their website, the All England Club’s licensing programme incorporates 30 licensed companies, all of whom are entitled to display the WIMBLEDON brand. 

Careful merchandising also helps The Club to build up a certain association with the brand.  The Championships at Wimbledon are associated with heritage and prestige, and there is no doubt that careful exploitation of their trademarks has contributed to this.

Sports Personalities

Players are brands in themselves and trademark registrations can enable players to capitalise on their fame, provided the name can function as a designation of trade origin.  On the flipside, if a name is not protected, it can be hard to prevent others from selling unlicensed merchandise. 

Following his success at Wimbledon in 2013, Andy Murray registered his name as a trademark in the EU.  He included over 100 different items in six classes, to cover a variety of possible merchandising routes.  His registered trademark will enable him to build up a powerful personal brand, and will make it easier to prevent third parties from using his name on their products, without permission.  A trademark registration will also help Andy Murray to protect his existing sponsors.

The more successful a player, the more valuable a brand.  Prior to making his own applications, but following Andy Murray’s Wimbledon victory, there had been attempts by unconnected parties to register “Andy Murray”, “Andy Murray Wimbledon Winner” and “Andy Murray Tennis Champion” as UK trademarks.  The UK IPO lists these marks as refused but they serve as a warning that if you do not protect your trademarks, someone else will.

As well as their names, sports personalities can, and have registered other insignia for which they are known, including nicknames, poses, slogans and signatures.

Prior to Andy Murray, Fred Perry was the last British player to win the men’s Championship at Wimbledon.  Many now associate his name with sportswear and British street fashion, over his tennis career, and this is something Fred Perry even acknowledged during his lifetime.  The Fred Perry laurel wreath logo has been registered for clothing since 1955, and Fred Perry’s signature has been protected in the UK as a trademark, since 1965.  The brand has spread to 50 countries around the world and remains highly popular.

The importance of trademark protection cannot be underestimated and when trademarks are exploited properly, they can become a highly important asset, and for individuals, their lasting legacy.

By Sharon Daboul