Tennis season in the United Kingdom is now well underway and with Wimbledon beginning just next week thoughts turn to tennis players as brands. Individual tennis players should consider protecting the value in their personal brand using a portfolio of trademarks, and a recent decision of the appointed person(1) (AP) involving well-known footballers has highlighted the need for sportspeople and other famous individuals to take a proactive approach to brand protection in the United Kingdom.
An organisation trading as Global Trademark Services Ltd (GTS) applied to register the four marks shown in Figure 1 below as UK trademarks in class 25 for "clothing, footwear and headgear".
Figure 1: applied-for trademarks
The registrar at the UK Intellectual Property Office (UKIPO) raised objections to all four applications under section 3(6) of the Trade Marks Act 1994 (TMA) on the basis that they had been made in bad faith. At a hearing, the hearing officer waived the objections in relation to WALLACE and CLARK but upheld the objections in relation to RONALDINHO and HENRY, meaning that these two applications could not proceed to registration.
In written reasons for this decision,(2) the hearing officer highlighted the need for the registrar to act as a "gatekeeper"(3) to the trademarks register, and this included preventing applicants who appeared to have no connection to a famous person from registering the famous name as a UK trademark. Relying on the case of Neymar,(4) she reasoned that there was a "rebuttable presumption of bad faith", meaning that bad faith on the part of an applicant in such circumstances was to be presumed until the applicant either provided a plausible explanation for wanting to register the name or demonstrated that they had the consent of the famous individual concerned. This approach, she said, would protect the interests of both the famous person and consumers who could otherwise be misled.
The hearing officer acknowledged there is no right of publicity or personality, or right to protect a person's image or likeness, in the United Kingdom, but treated that as inconsequential for the purposes of the bad faith filing objections. She referred to various passing off actions in the United Kingdom(5) in which famous individuals had been found to own goodwill in their personal brand and concluded from these that there was scope for a right of personality to exist in some form in the United Kingdom.
The hearing officer also highlighted as relevant to her decision the fact that GTS had indicated that it had "hundreds of similar marks to register" pointing to a "pattern of behaviour" that could "impact the registration of trade marks and those relating to famous people in particular". She said: "I do not think it an exaggeration to say that there would be a serious risk of the mechanism of trade mark registration being brought into disrepute."(6) In response to the argument that these views did not sit easily with having waived the objections in relation to the WALLACE and CLARK applications, the hearing officer said:
I have to point out that each mark is examined on its own merits . . . such an approach may give rise to the question of what level of fame is required in relation to whether the registrar decides to intervene on a given case. This is a question of individual circumstance.(7)
The hearing officer concluded her written reasons by saying:
without the consent of [Ronaldinho/Henry] I consider the application to have been made in bad faith. [GTS] was given the opportunity to obtain consent to the use and registration of the mark from [Ronaldinho/Henry] but appears to have chosen not to do so.(8)
GTS appealed to the AP, its primary argument being that the hearing officer was, in effect, conferring a "right to a name" on famous individuals.
Sitting as the AP, Geoffrey Hobbs QC set aside the hearing officer's decision. It was clear from his own written decision that he disagreed entirely with the approach taken by the registrar, describing it as "legally deficient" and "procedurally unacceptable".(9)
The AP's main criticism was around the "rebuttable presumption of bad faith". In his view, no such presumption existed. The AP said that, instead, the registrar should have proceeded on the basis that there was a "rebuttable presumption of good faith" and he explained his thinking in this way:
It is incumbent on the accuser to overcome the 'rebuttable presumption of good faith'. That is done by filing evidence which is sufficient to make it possible for the decision taker to conclude that the contested application for registration was filed in bad faith. The decision taker can then proceed to find: (i) that the 'rebuttable presumption of good faith' has been rebutted if the person accused of bad faith filing has provided no 'plausible explanations' for pursuing the contested application for registration; or (ii) that the 'rebuttable presumption of good faith' has not been rebutted if the accused person has provided such 'explanations'. The end result of the process of assessment is an overall finding to the effect that the accuser has (or has not) succeeded in rebutting the 'rebuttable presumption of good faith'. In my view, it is inconsistent with the governing presumption to invert that into an overall finding to the effect that the accused person has (or has not) succeeded in rebutting a 'rebuttable presumption of bad faith.(10)
The AP went on to highlight that there is no legal or administrative requirement in the United Kingdom for a person requesting registration of a mark to make a claim to proprietorship of the mark they are seeking to protect. Instead, title to a trademark arises solely by virtue of an entry in the register identifying the natural or legal person(s) to whom the original certificate of registration is issued on completion of the registration procedure. Therefore, the registrar had been wrong to require GTS to show it had some "claims to the names" it wanted to register. There was no carve out from this principle for famous individuals. In the AP's view, the approach adopted by the registrar had effectively conferred a "right to a name" on famous individuals but the AP was satisfied that no such right existed in law in the United Kingdom.
The AP criticised the registrar's approach further, saying that it amounted to examining trademark applications for conflicts with earlier unregistered (passing off) rights. He said there had "never been a time in the history of trade mark registration in this country" when that had been the duty of the registrar.(11) This amounted to an objection to the application on relative grounds under section 5(4)(a) of the TMA and inappropriately assimilated this ground with the absolute ground of objection for bad faith under section 3(6). This was procedurally incorrect as:
bad faith filing is a free standing basis of objection on absolute grounds under section 3(6) which is neither governed nor exhausted by the operation of the relative rights provisions of section 5 of the Act.(12)
The AP said that, in essence, the registrar's approach had been to object to the application on relative grounds as if acting on behalf of the famous individuals. In doing that, "the Registrar becomes an adversary of the applicant".(13) This was contrary to the registrar's obligation to exercise quasi-judicial powers as an independent and impartial decision-maker in accordance with human rights legislation. Instead, the registrar had acted as "investigator-prosecutor-judge-jury-executioner"(14) in relation to a serious accusation which they had raised against a person entitled to the benefit of a rebuttable presumption of innocence.
The AP's overall conclusion was that the registrar had not been entitled to raise bad faith as an objection at the examination stage of the application process. It was for the famous person concerned to oppose the application themselves, or seek to revoke a mark that had already been registered. The appeal by GTS was allowed and the applications for RONALDINHO and HENRY were remitted to the registrar so that the application process could resume.
This is a really significant decision for all famous individuals who may want to obtain trademark registrations for their own personal brand, and prevent others from doing so. It is clear that they cannot rely on the UKIPO to block attempts to register their name at the application stage. Instead, famous individuals must adopt a hands-on approach to brand protection, including by monitoring trademark registers on an ongoing basis for marks that could impact their personal brand. These applications should be opposed, or action taken to have registered marks revoked. Defining the scope of the monitoring will be key to ensuring that problematic marks are identified and not missed. Seeking legal advice on this, and the broader strategy around best practice protection of their personal brand, could be a gamechanger for high-profile sports professionals and other famous individuals, in terms of protecting the positive revenue-generating potential of their personal brand and preventing misuse by others.
For further information on this topic please contact Gill Dennis or Désirée Fields at Pinsent Masons by telephone (+44 20 7418 8250) or email ([email protected] or [email protected]). The Pinsent Masons website can be accessed at www.pinsentmasons.com.
Endnotes
(1) Decision BL O/264/22 in the matter of trademark applications Nos. 3587268 and 3595047 in the name of Global Trademark Services.
(2) Decision BL O/629/21 RONALDINHO and BL O/630/21 HENRY.
(3) Decision BL O/264/22 at paragraph 10.
(4) Case T-795/17 Moreira v EUIPO (Neymar) EU: T:2019:329.
(5) Including Irvine v Talksport [2002] EWHC 367 (Ch).
(6) Decision BL O/629/21 RONALDINHO and BL O/630/21 HENRY at paragraph 25.