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Roger Federer in Trade Mark Dispute with Nike

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13 August 2018

Roger Federer recently left Nike and signed a deal with Uniqlo reportedly worth $30million per year. The “RF” logo which is so synonymous with Federer  has remained with Nike. Federer now wants the logo which represents his initials but the position may not be as clear cut as it first seems. Trade Mark Attorney Jacqueline Pang discusses.

Nike Innovate C.V. and Nike, Inc. are recorded as the owners of a number of trade mark registrations around the world for the logo, predominantly covering class 25 goods. Presumably Nike also owns the copyright in the logo. On the face of it, they are therefore in a strong position to continue exploiting the mark and to stop third parties, including Federer and Uniqlo, from using it or a confusingly similar mark for clothing and related goods.

However, EU law provides for an ‘own name defence’ to trade mark infringement actions, provided the use of the name is ‘in accordance with honest practices in industrial or commercial matters’. It is, however, questionable whether Federer would be able to successfully rely on it should he decide to press ahead with use of the RF logo or a confusingly similar mark without first resolving the situation with Nike. Firstly, it seems doubtful that Federer’s use in these circumstances could be considered in line with ‘honest practices’. It is also unclear whether the defence would stretch to cover the initials of one’s name as opposed to a full name. Further, the rationale behind the defence is to prevent trade mark owners from prohibiting others using their own names to identify themselves; it seems unlikely to apply in the context of commercial transactions. Happily for Federer, he owns the trade mark registrations for his full name and so they are not in dispute.

There are echoes here of a line of European case law concerning fashion designers, notably Elizabeth Emanuel, who famously designed Princess Diana’s wedding dress, and Karen Millen. Both sold their eponymous businesses and were later prevented from using their own names in starting new ventures. Although those cases had different factual circumstances, they nevertheless reinforced the general principle that the same name can be separated into personal and commercial spheres, and that a name that has been used commercially is an asset that could be negotiated over and traded like any other good.

As always, much will depend on the contract between Nike and Federer. It may, for example, provide for how the ownership of the registrations and any goodwill in them would be determined upon termination. This episode also provides a lesson in the negotiation of contracts. Federer first signed with Nike in 1994, when he was a fresh-faced 13 year old. Few would have dreamt that he would go on to win 20 Grand Slam titles (and still counting) and be considered as one of the greatest players of all time. He has since become a brand in his own right. Clearly, when negotiating and drafting agreements parties should consider possible future scenarios and try to provide ways of dealing with them. Further, after an agreement comes into force, parties should continue to review it once in a while to see whether the terms remain appropriate or need re-negotiating or updating to reflect changed circumstances. This is particularly pertinent when the brand in question is a name, alias or nickname.

In his interview Federer seemed confident that the RF logo ‘will come to me at one point’. This may suggest there is indeed provision in the contract for the rights in the brand to be assigned to him or that talks are already under way. Alternatively, it may be a shrewd move to very publicly apply pressure on Nike and make sure that ‘sooner rather than later, Nike can be nice and helpful in the process’.

Federer may have realised that ultimately the legal position may prove irrelevant. He sums up the situation as “It’s also something that was very important for me, for the fans really … They are my initials. They are mine.” For his fans, the RF logo and the merchandise on which it appears are a personal and emotional connection with Federer and a public display of support. Nike may be in for a tough PR battle if it wishes to retain legal control of the brand: even if successful, it may be a Pyrrhic victory if it means alienating Federer’s passionate and loyal fanbase on whom the value of the brand presumably rests.

Jacqueline is a trade mark attorney at Mewburn Ellis. Her comments on this topic have been featured in UK and international publications including: Business Insider (UK), Business Insider (India), WIPR, Trademark Lawyer,World TM Review, Lexology, Daily Express, IP Kat , Tennis World (USA), Tennis World (Germany), Tennis World(Spain), Expressen (Sweden) and Design Taxi.