Tennis season in the United Kingdom has kicked off, drawing attention not just to the game but also to the brand protection efforts of individual tennis players. Safeguarding their personal brand becomes crucial through a strategic use of trademarks. A recent case involving appointed persons and their trademarks has emphasized the need for sports personalities, among others, to adopt a proactive approach to trademark protection in the UK.
Trademark Registration Challenges
An entity operating as Global Trademark Services Ltd (GTS) sought UK trademark registration for four marks (Figure 1) under class 25 for “apparel, footwear, and headwear.” However, the UK Intellectual Property Office (UKIPO) objected to all four marks under section 3(6) of the Trade Marks Act 1994, alleging bad faith. Upon review, objections to ‘WALLACE’ and ‘CLARK’ were waived, but those for ‘RONALDINHO’ and ‘HENRY’ were upheld, preventing their registration.
Reasoning Behind Decision
The UKIPO officer emphasized the role of the registry as a gatekeeper, preventing unrelated entities from registering trademarks associated with famous personalities. Referring to a case involving Neymar, she established a “rebuttable presumption of bad faith.” This meant that aspirants in similar situations were presumed to act in bad faith unless they provided a convincing reason or obtained consent from the concerned individual. This approach aimed to protect both the individual’s interests and prevent consumer deception.
While acknowledging the absence of specific rights to personality or image protection in the UK, the officer deemed this inconsequential. Citing instances of passing off, she argued for the recognition of a form of personality rights in the UK.
Additionally, GTS’s claim of having “hundreds of analogous marks to register” raised concerns about the potential impact on trademark registrations, leading to a risk of undermining the entire process.
Appeal and Decision Reversal
GTS appealed the decision, asserting that the officer was effectively granting a “right to a name” for famous personalities. The Appointed Person (AP), Geoffrey Hobbs QC, overturned the officer’s decision, criticizing the approach as flawed and procedurally inferior.
The AP rejected the “rebuttable presumption of bad faith,” suggesting instead a presumption of good faith. He emphasized that the burden of proof lay on the appellant to demonstrate bad faith. The AP clarified that UK law did not necessitate applicants to claim ownership of the names they sought to trademark, rebuffing the notion of conferring rights to names of famous individuals.
Conclusion
The AP’s critique of the UKIPO’s approach highlighted the need for a more nuanced assessment without conflating trademark applications with unrecorded passing off rights.
This case underscores the evolving landscape of trademark and design rights protection for individuals, especially those in the sports industry, necessitating a proactive and strategic approach to safeguard their personal brands.
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