Switching a swoosh for a square: keep your eye on the ball

The importance of establishing proprietorship of a trade mark at the outset of registration

July 2018

Summer in the UK has arrived with Wimbledon in full swing for the next two weeks (thankfully hand-in-hand with some sunshine for a change!) however, the score appeared to be low on the agenda when it came to Roger Federer’s match against Serbia’s Lajovic on Monday. Twitter went into turmoil not only regarding the Swiss nationals ninth win at Wimbledon, but on his choice of attire.

Federer announced in March this year that his longstanding (20 year) deal with sponsor Nike was over. Forbes magazine recently listed Federer as one of the world’s highest-paid athletes, currently earning $77.2m a year, with his Nike sponsorship considered one of the most lucrative deals in sport. The deal with Uniqlo is rumoured to be for ten years (which means some of these years will be post-retirement for the tennis champion who is currently 36 years old) and worth up to £300 million.

Federer has revealed that he will now be sporting the Uniqlo red square as opposed to the Nike “swoosh” on the court. Fans were however shocked when they noticed a lack of display of the iconic “RF” trade mark (the “RF Mark”). Despite playing in his Nike trainers, Federer doesn’t currently have a shoe sponsor. Nike do however reportedly own the rights to the RF Mark, and it seems Federer/Uniqlo do not appear to have been granted a licence to use the RF Mark, nor an assignment to the right itself. In an interview with the Metro, Federer confirmed that although the right to the RF Mark is held by Nike, he considers himself the owner and appears to be confident judging by his comment that “it will come to [him] me”. Although the RF Mark is derived from Federer’s first and surname, it can be difficult to establish that initials constitute a name. This may explain why the decision was made by Uniqlo not to apply the RF Mark to the kit for fear an own name defence for use would likely fail in this instance.

This highlights the importance of establishing proprietorship of a trade mark at the outset of registration, particularly for those individuals or businesses that are entering a joint venture. Arguably the value of the RF Mark for use by Nike will have dropped considerably as they are no longer Federer’s official sponsor. However, the value of the goodwill behind the RF Mark will no doubt place Nike in a good negotiation position to request a high price for an assignment of the right. The question is, will Nike use this negotiation as an opportunity to counter offer for a shoe sponsorship as Uniqlo do not currently manufacture tennis shoes? No doubt all will be revealed soon.

This update was prepared by HGF IP Solicitor Liz Cooper. If you would like further advice on this or any other matter please contact Liz or your usual HGF representative, alternatively visit our Contact Page to get in touch with your nearest HGF office.