Footballers, goal celebrations and trade marks – what’s it all about?

The trade mark applications filed by Mills & Reeve on behalf of England and Chelsea footballer Cole Palmer have hit the headlines. For anyone interested in understanding the motivation behind these applications, this article is for you.

“Everyone knows that celebrity sells. It is therefore not surprising that persons in a position to do so should wish to benefit from the commercial exploitation of names, devices, and images which enjoy celebrity status as a result of their efforts and endeavours”.

“There is in English law no ‘image right’ or ‘character right’ which allows a celebrity to control the use of his or her name or image”.

These two quotations are both taken from UK judgments in cases which have explored the means available to sportspersons and other celebrities to stop the commercial use of their names and likenesses without their consent. They help give context and start to explain what the Cole Palmer applications are all about.

The first quotation acknowledges a universal truth which has never been more accurate than it is now: many businesses, particularly consumer-facing, want to be associated with popular, famous people, and this presents lucrative marketing opportunities. It’s one of the reasons we’re seeing a steady growth in athletes and other famous people establishing image rights companies to manage and exploit their personal brand assets.

The second quotation acknowledges a less obvious truth: UK law does not make it easy for celebrities to stop the unauthorised use of their name or image for commercial purposes.

That’s because, in the UK at least, such individuals are often reliant on a patchwork of different intellectual property rights and laws of differing and uncertain scope, which were not conceived to protect the value of celebrity.

To maximise the protection available from that patchwork of rights and laws requires proactivity, as not all of the available rights arise automatically.

Registered trade marks

The registration of personal brand assets as trade marks, including, most obviously, their name, can provide sportspersons and other celebrities with wide-ranging rights to prevent the unauthorised use of those assets for commercial purposes.  

While the exact scope of registered trade mark rights will vary depending on the circumstances, registration certainly provides broader protection than the law provides to unregistered brand assets. This is because the test for infringement of a registered trade mark is different to the test for passing off - the area of UK law which protects unregistered brand assets from unauthorised commercial use - and in the case of famous registered trade marks, it can be an easier test to satisfy. 

Registration of brand assets as trade marks requires proactivity. An application has to be filed with the intellectual property office in the country where protection is sought, and the application will then be scrutinised by an examiner before being accepted for registration or refused.

What about goal celebrations?

It’s not only famous names that can be registered as trade marks. Any personal brand asset which is capable of operating as a badge of commercial origin is potentially registrable as a trade mark in the UK and EU. This can include a signature, an image of a famous person’s face, and even a goal celebration.

There has been plenty of media coverage about the registered trade mark applications which have been filed by Mills & Reeve on behalf of Cole Palmer, in respect of various of his personal brand assets, including his name, nickname, and likeness.

Most of the media has, unsurprisingly, focused on the application to register a video of Cole performing his famous goal celebration. That focus is because the application for the goal celebration is unusual. While some, but remarkably few, footballers have applied to register their names as trade marks, we are not aware that anyone previously has sought to protect a goal celebration as a moving image, which shows the full celebration instead of a still 2D logo which incorporates a stylised approximation of that celebration.

There has also been a lot of speculation and apparent misunderstanding about why Cole has applied to register his goal celebration. The answer is simple. It is because there is a growing commercial market for Cole Palmer, because his goal celebration and the associated Cold Palmer nickname are highly marketable aspects of his personable brand, and because Cole wants to maximise his ability to control – and if necessary stop - the way businesses use representations of him performing that celebration for their own commercial purposes.

And for all those people who have been wondering or lured in by the headlines, he has not applied to register his goal celebration as a trade mark so he can stop other professional footballers, whether Morgan Rogers or anyone else, other sportspersons, or kids in the playground, from doing the same or similar celebration when they score!

For more information about the smart use of intellectual property rights to protect personal brand assets, please contact any of our specialist team:

Alex Newman, Jasmine Fearnley, Nicola Hanglin and Holly Gillan.

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