The importance of trade marks in football – controlling brand value & avoiding own goals

This article examines recent cases, developments and disputes that illustrate the importance of trade marks within football and the vital role that the law plays in facilitating the commercial growth and success of the game. It also considers the pitfalls facing participants who take their eye off the ball when it comes to protecting the brands (names, badges, slogans, likeness) that they seek to commercialise. Specifically it looks at:

• The commercial explosion and the evolution of the Chinese Super League;
  
  
• The importance of the trade mark;
  
  
• Failure to own or register any trade marks – the case of Steaua Bucharest;
  
  
• The “Old Lady” with a fresh new look – the case of Juventus FC;
  
  
• Difficulties registering similar marks – the case of Valencia CF and DC Comics;
  
  
• Trade mark similarity - not close and certainly no cigar.  The case of AC Milan and Marriott Hotels;
  
  
• Failure to register a domain name – FC Barcelona and FCB.Email, contrasted against PremierLeague.Club;
  
  
• FC Barcelona’s attempts to register the outline 7-pointed shape of its crest;
  
  
• Use of intellectual property rights as security – The Rangers and Sports Direct affair;
  
  
• Rangers vs Scotland’s Heraldic Law;
  
  
• A “trade mark free kick” - marks capable of identifying a footballer
  
  
• Owning the action on the pitch?
  
  
• The Special One v The Normal One – Jurgen Klopp
  
  
• 1-0 to the Arsenal!  Protection against sale of unofficial merchandise
  
  
• A piece of the Killie pie – Killmarnock FC and Brownings Bakers and Wayne Shaw’s Piegate
  
  
• The 2016 UEFA European Championship v Ambush Marketing
  
  
• Comment: looking forward