Would you regret it if you sold your name?
Wimbledon is upon us again and at first it appears that not much has changed; the sun is shining and you are clutching a bowl of luscious strawberries drenched in cream. However, as Roger Federer steps onto the grass, it is clear that something has changed – Federer is not wearing his usual Nike branded clothes, rather he is wearing an outfit sponsored by UNIQLO. Federer’s new 10-year deal is reportedly worth £228 million, and his previous long-term Nike sponsorship deal has come to an end. Despite this, Federer is still tied to Nike as it owns the logo that depicts Federer’s initials (‘RF’). Federer has voiced his desire to own the logo for his fans and said that “they are my initials. They are mine”.
The trade mark registered by Nike
So how did this happen? Nike filed an application to register the monogram in 2008 and it was registered in 2010. Federer stated in a press conference that “…the RF logo is with Nike at the moment, but it will come to me at some point. I hope sooner rather than later, that Nike can be nice and helpful in the process to bring it over to me”. Subject to a contract to the contrary, there is no obligation on Nike to allow Federer to use the logo. It is likely that Nike also owns the copyright. Federer seems to have a positive relationship with the company so it may kindly (for a fee) assign him the trade mark, licence it to him, or licence it to UNIQLO. On the other hand, Nike could choose to continue to exploit the logo without Federer gaining financially from it. If Nike retains ownership of the trade mark, it would be in a position to prevent Federer from designing a similar logo to use as branding for apparel or related goods.
This situation highlights the importance of considering the long-term consequences of a company owning your initials. José Mourinho, an ex-manager of Chelsea Football Club (‘Chelsea FC’), found himself in a similar predicament when he became the manager of Manchester United. Chelsea FC owned a trade mark in respect of Mourinho’s name. Therefore, Manchester United could not simply use Mourinho’s name on its clothing merchandise unless Chelsea FC, for example, granted Manchester United a licence in return for royalties.
Briffa advises on all aspects of copyright law and practice, including contentious (e.g. infringement) and non-contentious (e.g. licensing) matters. If you have any queries regarding copyright or any other intellectual property rights, please do not hesitate to get in contact with us and we will be happy to assist. We offer free 30-minute consultations to all new clients at our offices in the Business Design Centre in Islington, London.