Roger Federer, Manuel Neuer and Usain Bolt are not only among the best-known and most successful athletes in their discipline. They also have one thing in common: their names and other characteristic features can – under certain conditions – be protected under trademark law and exploited commercially.
Today, top athletes are much more than “just” athletes. They are brand personalities who combine reach and recognition.
What does trademark protection actually mean?
Trademark law does not protect mere fame as such, but rather signs that the public understands as indications of commercial origin. In order for an athlete’s name to be acceptable under trademark law, it must have distinctive character, i.e. be capable of distinguishing the goods or services of one provider from those of others. Mere factual indications or other descriptive designations are generally ruled out because they do not convey any indication of origin.
After all, this registration alone is not enough: the decisive factor is use as a trademark in the protected area of goods and services so that the sign actually fulfills its function as an indication of origin and also remains enforceable.
Well-known trademark: protection even without a classic likelihood of confusion
If a sign achieves the status of a well-known trademark, the scope of protection extends beyond the classic likelihood of confusion. Use can then be prohibited if it creates a mental link with the well-known trademark and exploits its reputation. This includes, in particular, cases of exploitation of reputation, but also dilution of distinctiveness and damage to reputation.
Bad faith registrations: When strangers hijack the name
In sport, it is not uncommon for third parties to attempt to register well-known names in order to gain an economic benefit from them. Such constellations can – depending on the legal system – be qualified as bad faith if they are clearly not aimed at a bona fide intention to use the name, but rather, for example, at skimming off notoriety. Whether bad faith exists is generally decided on the basis of an overall assessment of the circumstances.
Opposition, nullity/cancellation proceedings and the defense of bad faith can help against the hijacking of well-known sports names. This is because trademark applications in bad faith (so-called bad-faith filings) are grounds for cancellation.
The license chain: The core of exploitation
Trademark protection is not an end in itself. Its economic value is only realized through a robust licensing chain, especially in merchandising, where third parties affix the trademark to goods, distribute products and exploit them commercially. Whether this exploitation is successful and legally secure depends largely on precise contractual regulations: The trademark owner must thus control who may use the trademark for goods and services in a specific sign form, whether sublicenses are permitted and how enforcement against third parties is organized.
It is crucial that license agreements not only contain a mere permission of use, but also establish effective quality assurance. This is because the trademark only fulfills its function as a mark of origin if the public expects the products to be of consistent quality and this expectation is not disappointed. Accordingly, licenses should provide for binding quality standards and clear termination mechanisms in the event of infringements. This not only protects the economic value of the trademark, but also prevents dilution of the trademark.
More than the name: brand strategy for athletes
A viable trademark strategy for athletes is not limited to the mere registration of their own name. Rather, the decisive factor is which specific signs are actually perceived as signs of origin and therefore have the necessary distinctive character.
Based on this, athletes can structure a portfolio that covers the planned fields of exploitation. By linking the protected object, representation and concept, athletes can develop an enforceable and commercially exploitable brand portfolio.
