Branding the Game: The use of Trademarks in Sports

24th August, 2024 - 6:17 am Categories: Sports Law Trademark 0 Comments

INTRODUCTION

The year 2024 has given us a summer full of amazing sporting events, starting with the Euros and continuing with Wimbledon, the Tour de France, and eventually the Olympic and Paralympic Games.[1] In this we will see behind the scenes how trademark protection strategies are important in sporting industry.[2]

Business value is created by a strong brand and trademark protection. So indeed, the most important and valuable asset of a company is their Intellectual Property.[3]

Branding in sports is a huge industry. It affects players, team name, title of the event name or even venue where the game takes place. Eventually branding is crucial for event sponsors.[4]

We can see how trademarks are important in sports by following factors-

• The trademark creates brand recognition which acts as a powerful tool in recalling among the fans as a well-designed logo can instantly catches the public attention and can remind fans of their favorite teams or athletes.
• The main problem which arises in sports industry is the problem of counterfeiting products which are flooding globally in their markets. Trademarks protect the athletes who can take legal actions against those who involved in counterfeiting and also protecting their fans and their revenues.[5]
• Trademarks also help athletes becoming more marketable as trademarks creates commercial value by attracting more sponsorships or their brand value because their unique identity is protected.[6]

SPORTING PERSONALITIES AND THEIR TRADEMARKS

In 2013, Andy Murray, a great tennis player, after winning the WIMBLEDON had registered his name as a trademark in the EU.[7] As a registered trademark the third parties cannot use his name on the items without permission and it can help in making of a powerful personal brand. The value of the brand will increase when player becomes more successful.[8]

Apart from names, the sports personalities can even register their poses, nicknames, slogans etc.

The most famous example of a registered pose is of Usain Bolt’s “Lightning Bolt” pose and his “to di world” slogan and Micheal Jordan’s “Jumpman” pose which depicts him in mid air when he soars to slam dunk.[9] It appears in many things like merchandise making this inspiration for many basketball fans and athletes alike.

Another famous basketball player who has built his brand around his nickname is LeBron James in the name of “King James”[10] that covers everything from sports equipment to clothing.

Sports personalities or teams not only protect their poses or nicknames or logos they also protect their anthems or slogans. Like the famous football club Liverpool FC has registered their anthem “You’ll never walk alone”[11] which represents their unity and support of their fans. The main object of protecting this as trademark is to remain intact the emotional connection and the heritage of the club.[12]

PERSONALITY RIGHTS

Even if a player does not register this as trademark then too they have personality rights or image rights so that there will be no unauthorized use of their names or other likable things. A sportsman is also a celebrity and is very popular across the world so it would be very easy to misuse his image for commercial gain. So, the sportsperson needs to protect their name, pose, slogan etc through trademark.

There are no statute or law that protects image or personality rights in India but Article 21 of our Constitution of India protects rights to privacy and right to publicity. The courts through various judgements are recognizing these rights.

The Delhi HC in the case of ICC Development (International) v. Arvee Enterprise[13] held that “The right of publicity has evolved from the right of privacy and can inhere only in an individual or in any indicia of an individual’s personality like his name, personality trait, signature, voice, etc. An individual may acquire the right of publicity by his association with an event, sport, movie, etc.”[14]

Another case of Gautam Gambhir v. D.A.P & Co. & Anr[15] is important because in this the person is running a restaurant in the name of Gautam Gambhir which resonates with the name of former cricketer Gautam Gambhir. So, the cricketer filed a suit against the defendant for using his name for commercial purpose but court did not granted injunction because the defendant’s name was also Gautam Gambhir and he never claims that the restaurant is anyway related to the cricketer Gautam Gambhir.[16]

INDIAN PERSPECTIVE ON SPORTING TRADEMARKS

In India sports is a great sector for entertainment and due to this, sports has become great sector for business a well which includes jerseys, branded grounds, lights, camera, broadcasting rights and many more like these.

The most exciting and popular sports in India in game of Cricket which is controlled by Board of Control for Cricket in India (BCCI) and cricket generates most of the income from all the sports combined.

BCCI conducts all the events of cricket in India and the most famous cricket league in India is Indian Premier League (IPL) and BCCI has the trademark of all the events organizing in India including IPL. So, the logo, trademark and tradename of IPL was infringed many times.

Rediff.com is an online gaming company who has created a game called Indian Fantasy League (IFL) which is depicting the logo similar as the logo of IPL where a player is playing a shot in a game. So, BCCI has filed a suit against them for infringement of trademark and Madras HC held that IFL cannot use this logo or name as this will amount to BCCI’s trademark infringement.[17]

Another similar issue which comes in our attention in 2018 where BCCI has filed a suit against Grace Sports Pvt Ltd (GSPL) for using names like “Indian Junior Player League Twenty 20”[18] and www.ijplt20.com and www.juinorsipl.com which is infringing the trademark of IPL. The Bombay HC has banned GSPL for conducting any tournament of juniors aged between 14 to 18 years as it amounts to trademark infringement of BCCI.[19]

In the case of Saurav Ganguly vs Tata Tea Ltd, when the famous cricketer was returned to India after a successful test stint at Lords he discovered that his name was using by a popular tea brand which are offering customers to congratulate him on his success, but he did not in any way related to that promotion so the court ruled that the name Saurav Ganguly covers under his Intellectual Property Rights.[20]

CONCLUSION

In the business and sports sectors, trademarks are essential because they are strong instruments for commercialization, brand protection, and recognition. Trademarks protect athletes’, teams’, and events’ identities in sports, assisting in preventing counterfeiting, guaranteeing marketability, and upholding the integrity of the brand. Personal trademarks can increase an athlete’s brand value, as demonstrated by the cases of Michael Jordan, Usain Bolt, and Andy Murray. At the same time, legal safeguards like personality rights prohibit unauthorized use of an athlete’s likeness.

In India, trademark protection is very important because cricket is the most popular sport there. Sports brands’ commercial worth and distinctiveness are dependent on strong intellectual property rights, as demonstrated by the BCCI’s successful legal efforts against trademark infringement in IPL instances. All things considered, building and maintaining commercial value in sports and other industries depends on the efficient administration and protection of trademarks.

Author: Arya Bhatt, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at  Khurana & Khurana, Advocates and IP Attorney.

[1] Morrish L, “Intellectual Property in Sports: The Race to Trademark Protection” (Lexology, July 26, 2024) https://www.lexology.com/library/detail.aspx?g=706a60b9-e7cb-4dde-a146-f26f6e3968b4

[2] Ibid

[3] Igloo, “Trademarks in Sport” (EIP, July 14, 2014) https://eip.com/us/insights/article/trademarks_in_sport

[4] Ibid

[5] “The Role of Trademarks in Sports: How Athletes and Teams Protect Their Brands” (Trama) https://www.tramatm.com/blog/category/media/the-role-of-trademarks-in-sports-how-athletes-and-teams-protect-their-brands

[6] Ibid

[7] Igloo (n2)

[8] Ibid

[9] Trama (n4)

[10] Ibid

[11] Ibid

[12] Ibid

[13] 2003 SCC OnLine Del 2 : (2003) 26 PTC 245

[14] Ibid

[15] 2017 SCC OnLine Del 12167

[16] Ibid

[17] Sehgal DR, “Intellectual Property Rights in Sports : The Trademark Vests in Individual Player and the Governing Body – iPleaders” (iPleaders, May 4, 2021) https://blog.ipleaders.in/intellectual-property-rights-sports-trademark-vests-individual-player-governing-body/

[18] Ibid

[19] Ibid

[20] Ibid