It has been widely reported in the general press in the last few days that ‘image rights’ issues have delayed the signing of the contract that brought Jose Mourinho to Manchester United as its next manager, following the departure of Louis van Gaal. However, as of this morning it appears that these issues have been overcome with confirmation that Mourinho has signed a three-year contract.
As we know, despite the 2015 Rihanna v Topshop Appeal decision, image rights as such are not protected by the English legal system, and the more discerning IP reporters have probably correctly identified that the tricky point might evolve around the registered trade mark for Mourinho’s name. (more…)
There are no easy games at this level: EU General Court Refuses Trade Mark Registration of FC Barcelona’s Crest Silhouette
In April 2013 FC Barcelona applied for the registration as a Community (EU) Trade Mark of the silhouette of its crest in relation to a range of goods in classes 16 (paper goods, stationery, etc), 25 (clothing, footwear, headgear) and services in class 41 (including sports activities).
The mark for which FC Barcelona was seeking registration is the following:
The English legal system does not acknowledge image rights. Celebrities cannot claim a monopoly on their image, nor a right to control the use of their name, likeness and other attributes that the public associates with them. Historically, they have resorted, as a compromise, to other forms of protection, such as registered trade marks and passing off (see explanation of passing off below), in particular.
However, a recent appeal judgement by the English Courts indicates that in certain circumstances, and depending entirely on the facts of the case, the Common Law tort of passing off can be “stretched” to prohibit the commercial use of celebrities’ images. This precedent is, in the view of the author, likely to be applied tightly, but presents an opening that celebrities will look to rely on to control the use of their image by unauthorised third parties.
The appeal judgement relates to the entertainment industry and follows a case successfully brought by pop-star Rihanna against the high street retailer Topshop. However, the implications for sports personalities, for whom a large proportion of the earnings originates from product endorsements, are self- evident and possibly greater that those for the entertainment industry. (more…)
Last week, senior members of Keltie’s Design Team, Manuela Macchi, Michael Moore and Emily Weal, attended the MARQUES Luxury Brands Symposium, which took place in the suitably exquisite surroundings of the Hotel Baur au Lac in Zurich.
The theme of the 2-day conference was the protection of luxury brands in a fast moving world. The full program can be viewed here.
Presentations covered a range of topics relevant to luxury brands and included not only the legal aspects of their protection but also perspectives from a marketing expert, an academic and a financial analyst on the industry and its outlook. (more…)
On Tuesday night Keltie hosted and sponsored a presentation by Patrick Stewart, Director of Legal & Business Affairs at Manchester United. The event was organised by LBDC (‘Lawyers Business Development Club’) and brilliantly introduced by LBDC’s CEO Colin Carroll and Keltie Partner, Sean Cummings. We had a full house and were sorry that several interested people could not get a place. However, for those who could not attend and as a memo for those who could, here is a brief account of the talk, that leaves out the witty anecdotes (sorry, I know it’s those you are after, but I don’t think it’s fair to publish them on a blog). (more…)
Registered protection of trade marks is the safest and most cost efficient way of obtaining an easily enforceable trade mark right. Whilst some jurisdictions like the UK afford protection to non-registered trade marks that have acquired goodwill through their use, the enforcement of these non-registered rights relies on the expensive and time consuming exercise of evidence gathering in relation to the use of the mark, whereas a trade mark registration certificate is prima facie evidence of the existence of the associated right.
In recent years, the sports industry has seen a growing number of registrations and attempted registrations of marks that differ from what is considered the more traditional words and logos (as above), which can be broadly categorised as “non-traditional” or “unusual” trademarks. This article takes a trip through examples of such non-traditional trademarks, and explores the protection that sports brands can achieve from their registration, a process that, in the author’s opinion, remains underutilised despite the potential that registration offers to an industry that increasingly relies on the exploitation of Intellectual Property (IP) and IP related rights. (more…)
The Chinese National People’s Congress (NPC) is in the final stages of a process of revision of the Chinese Trade Mark Law that – if implemented – should have positive implications for foreign trade mark owners.