Protecting your brand - Top tips for sports organisations

This article explores how sports organisations and bodies can secure protection for their brands, enabling them to create a robust and dynamic brand protection and exploitation strategy.

Article Highlights

• Rights in a brand name
  • Registering a trade mark
  • Unregistered rights – passing off
• Registering designs
• Protecting IP using licence agreements
• Provisions relating to protection of IP in commercial agreements
• Registering domain names
• Key considerations for implementing a brand strategy

Introduction

Recently, there has been news that the former Arsenal goalkeeper, Jens Lehmann, has the trade mark for the word “THE INVINCIBLES”^{[1] [2]}. The Invincibles is of course a reference to Arsenal’s 49 game unbeaten run, starting in May 2003 and ending in October 2004 which includes all 38 games of the 2003-2004 premier league season^[3].

Lehmann was the goalkeeper for the team at the time and played a key role in their success. He bought the trade mark rights in the lead up to the 20-year anniversary of the historic achievement by Arsenal. Since Lehmann acquired the trade mark, he now has the support of the manager, Arsene Wenger, and the other players from that famous 2003-2004 season. He then set up a company through which to exploit the trade mark – all 28 players of the 2003-2004 season as well as 12 staff members and coaches are going to be shareholders^[4]. Lehmann has confirmed that all profits from the exploitation of the trade mark will be donated to charities and he plans to commercialise the trade mark through reunions, documentaries, the sale of memorabilia and other similar activities^[5].

However, it has been reported that Arsenal were unaware of the purchase of the trade mark by Lehmann^[6]. Regardless, they have been reported to have given their support to the registration. If Lehmann was not accommodating and refused to take into account the club’s vision for the trade mark, this could have created issues for Arsenal that could serve as caution to other sports brands, some examples of this type of behaviour are:

• if the trade mark owner was using the mark in bad faith, this would cause Arsenal issues as they may not want the mark to be associated with negative connotations or a certain brand;
• if the rights holder demanded a high sum for the licence fee in order for the club to use “The Invincibles” on any branded products or any references to the mark, and;
• if the owner of the mark used the mark in a way that is not connected to the 2003-2004 season and/or the anniversary, as this may cause confusion amongst the public if the mark was used in relation to another football club or sporting event.

Many domestic and international sports organisations and bodies often do not prioritise their intellectual property ("IP") brand strategy. Registered intellectual property rights (“IPRs”) protect creations, so that only the owner or its licensees can use it. IPRs include trade marks (which protect brands), copyright (which protect literary, artistic, dramatic and musical works), patents (which protect inventions) and design rights (which protect designs). Other legal mechanisms also exist which allow organisations to protect their knowledge and creations, such as the laws of passing off and confidential information. Sport organisations need to ensure they have a stringent intellectual property policy in place in order for their IPRs to be protected. The first step is to outline what IP is protectable and the process to undertake to protect it. Timelines from application to submission and then ultimately registration need to be considered as well as what jurisdictions are relevant for IP protection. The strategy needs to be reviewed and updated accordingly as oppositions and renewals need to be monitored and managed accordingly.

Effective IP protection has never been so vital for sports organisations. It allows them to protect and create value in their brands. In turn that enables them to generate greater revenue via commercial means which, as we have seen recently in football via the financial fair play rules, can have a direct impact on sporting performance.

Below we explore how sports organisations and bodies can secure IP protection for their brands, enabling them to create a robust and dynamic brand protection and exploitation strategy: