Roger Federer, holder of eight Wimbledon men’s singles titles and currently ranked no. 2 in the world in men’s tennis singles, is one of the greatest tennis players of all time. With an estimated net worth of US$450 million he has at the age of thirty six entered a US$300 million contract with Japanese casual wear, designer, manufacturer and clothing retailer Uniqlo, currently valid until he turns forty seven.

This impressive deal ends Federer’s twenty-year contract with Nike, in terms of, which he is said to have earned US$10 million annually. A trade mark issue has, however, transpired concerning Roger Federer’s initials, which have been used extensively on Nike’s range of branded gear that many may be familiar with:

It is reported that the Nike group are the registered owners of this trade mark in various territories around the world in class 25, the main class for clothing, footwear and headgear. This means that if any other unauthorised party, in this case Uniqlo, were to use RF on its clothing and related gear, Nike would be in a position to stop them from doing so since they own the registered trade mark, and any unauthorised use would be trade mark infringement. This is despite the fact that RF are Federer’s initials.

The question concerning ownership and use of personal names is not new. The South African Trade Marks Act provides that it is defence to use one’s personal name provided that this use is ‘consistent with fair practice’, while in the EU it is a defence to use one’s personal name if is ‘in accordance with honest practices in industrial or commercial matters’.

Federer has requested Nike to transfer the trade mark to himself, because the mark comprises his initials, which would surely be “in accordance with honest practice”. It turns out, however, that the issue is not quite as simple as the question concerns the terms of the commercial contract entered between Federer and Nike and where the goodwill in the trade marks and intellectual property resides now that it has terminated. It is also not clear whether the own name defence applies to initials.

The match between Kevin Anderson and Federer had all tennis fans and South African supporters glued to their seats, and it will be interesting to see how this trade mark issue transpires.

In last month’s Legal Brief https://www.werksmans.com/legal-briefs-view/trade-marks-sports-creation-superstars/ some of the world’s greatest footballers named highlight the sheer magnitude of superstar status and the brand value associated therewith. Italian club Juventus has since agreed a hefty £105 million (approximately US$140 million) transfer fee for Cristiano Ronaldo’s move from Real Madrid and with reported record sales of over 520 000 Juventus shirts in 24 hours at an approximate cost of US$90 per shirt, this fee will be recouped in no time.

BEST PRACTICE

Trade mark registrations for logos, names (even nick names) and new brands provide statutory protection against unauthorised use and can be licensed for royalties. Trade marks are both territory and class specific and are perpetual on payment of renewal fees, usually every ten years.

While sportsmen, popstars, movie stars and indeed any public figure should take the necessary steps to ensure that trade marks be filed extensively and protect all intellectual property at the outset, the principle applies to all contracts commercialising intellectual property.

Written by Donvay Wegierski, Director from Workmans Attorneys