The recent “Cold Palmer” trade mark case, which saw Chelsea and England footballer Cole Palmer’s application challenged by a vineyard, is a reminder that, whatever walk of business you are in, trade mark registrations are an essential part of business planning.
Being a sports personality does not grant you extra rights in your name, likeness or image. Just like other businesses, as a sports personality there may be real value in these assets but in order to capture the value it is essential to engage with the trade mark system.
Cole Palmer, through a company he runs, filed an application to register his nickname Cold Palmer as a trade mark for a wide range of items, including alcoholic drinks. Achieving a registration would create a monopoly in this brand and hence opportunities for value creation – for example, through licensing. His application was formally challenged by Societe Civile du Chateau Palmer, a vineyard based in France.
While the details of how this opposition played out remain confidential, the register shows that Palmer has abandoned his filing to the extent that it covers wine products. He may still obtain a registration for other items filed for, but he will not get a registration for wine.
In showing how a vineyard can apparently influence the behaviour of a Premier League footballer, the case is a reminder of the power of trade marks. Yet, just like in other walks of life, those engaged in sports businesses – not least the athletes themselves – often overlook this crucial step. This is especially surprising given the long history of sports personalities using the trade mark system to protect their image.
Sport trade mark issues expected to rise
Sports professionals, including athletes, should consider seeking legal advice on whether they should register a trade mark – and do so sooner rather than later, before someone else does.
We anticipate this issue becoming more prevalent as personalities in the sporting arena – and more widely – become concerned around issues posed by technologies such as AI which increase the risks of an image or athlete’s likeness being cloned.
As we see a continued rise in esports and virtual games (where a real-life person’s image may be replicated in the metaverse), we are likely to see an increase in the number of cases where personalities find their image used without their consent. That will surely lead to a parallel increase in the appreciation of the value of trade mark registrations.
Similarly, we may also see an increasing awareness on the part of sports personalities to generate revenue from licensing virtual assets.
In this sector, where cutting-edge technology and the sports industry collide, traditional trade marks and other IP rights will be crucial for those who want to stay ahead of the game.
Ben Travers is a partner at national law firm Foot Anstey.
