Intellectual property rights update: key cases for sport in 2017/18

At a time when the commercial importance of trademarks are more important than ever, a study1 published in the Harvard Law Review found that 81% of 1000 of the most common words are already registered as single-word marks, and suggests “we” are running out of good marks. What could this mean for sport, and more importantly the impact on brand protection activities? Well, given that often the most creative and recognisable trade marks incorporate design elements and word combinations there would seem to be no immediate need to panic. Any new sports brands, teams, franchises looking to make an impact can still rely on creativity and the trade mark clearance process to launch a new brand on the marketplace and field of play.

Against that interesting backdrop, this article reviews the most significant developments in Intellectual Property Rights (IPRs) in sport in the last year. While in Europe, non-conventional marks such as colour marks and shape marks were in the spotlight once again; in the US the long running dispute over disparaging marks raged on. Specifically, we examine:

• Disparaging marks and their interaction with the US First Amendment – the Washington Redskins case

• The latest on “non-conventional” trade marks

• Graphical representation

• A quick mention of Brexit

• Unjustified threats – a review of the Intellectual Property (Unjustified Threats) Act 2017

• The politics of a logo – the case of UKIP and the Premier League

• Image rights – the case of Pro Evolution Soccor and Diego Maradona

• What’s in a nick-name – the case of Thanasi Kokkinakis and Kellog

• Trade mark clearance – the clearance process when launching or revamping a trade mark:

  • The Vegas Golden Knights – difficulties with the name supposedly chosen to avoid disputes

  • Formula 1 – Liberty Media’s revamp

  • Welcome to Miami – Beckham’s new newly approved MLS Miami franchise

  • Wembley Stadium naming woes

• First to file & copyright cases – the Dulwich Hamlet FC case

• Infringement –keeping the wolf from the door, the Wolves FC logo dispute

• Commentary