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Could celebrating a goal infringe a trade mark?

22 October 2013

As has been widely reported, Gareth Bale has applied for trade mark protection of a number of trade marks, including one which is similar to his famous goal celebration. If he obtains the trade mark protection that he has applied for in the UK and the EU, he will ensure that he has the exclusive right to use those trade marks in the UK/EU to market any goods and services that are listed on his applications (or give permission to anyone else to do so).

In light of the above, there has been speculation around whether Gareth Bale, if his applications are successful, could prevent any other footballer celebrating a goal in the same manner.

The quick answer to this question is no. The first reason lies in the trade marks which Bale is seeking to protect. Rather than making an application to protect his action of a making a heart with his hands whilst celebrating a goal, Bale is seeking to protect his name, the phrase ‘ELEVEN OF HEARTS’ and the associated 2D logo.

The second reason is that the exclusive rights which are granted to the owner of a registered trade mark generally only protect the use of that trade mark in connection with the goods and services which the trade mark is registered against.

In Bale’s application for registration of ‘ELEVEN OF HEARTS’ and the below logo, he has asked that the marks be registered against certain goods such as clothing and footwear.

In respect of his name, Bale has included the above goods as well as asking that his name be registered against a wider range of goods and services including charitable fundraising and sports officiating. As a result, if his applications in the UK and EU are successful, Bale will be the only person in the EU entitled to market and sell clothing, footwear etc using his name or either of the other two marks (or to grant others the permission to do so).

Accordingly any attempt without Bale’s permission to use a sign in the course of trade which is the same or similar to one of Bale’s marks in respect of goods or services which are the same or similar to the goods and services registered against Bale’s mark, could be a potential infringement of that mark.

In addition, the use of a sign in the course of a trade which is the same or similar to Bale’s marks in relation to entirely different goods or services could also be infringement if the relevant mark had acquired a reputation in the UK/ EU and the use of sign was taking unfair advantage of, or was damaging to, that reputation. Whilst it might be difficult for Bale to argue at this stage that either the ‘ELEVEN OF HEARTS’ mark or the above logo have acquired any reputation just yet, the same cannot be said for Bale’s name.

What would happen if a footballer was to register the image of a goal celebration as a moving trade mark?

In theory this may be possible. Indeed the proposed new EU Trade Marks Directive envisages removing the requirement for registered trade marks to be represented graphically provided they are capable of being represented in a manner which enables the competent authorities and the public to determine the precise subject of the protection afforded to its proprietor - such as by attaching a multimedia file.

As set out above, the mark would need to be registered in respect of certain goods and services, and to infringe the registered mark, the goal celebration sequence would have to amount to use in the course of trade in respect of the goods or services for which the mark was registered, and be perceived as having brand origin so that the use was likely to affect the functions of the registered mark (principally identifying the goods and services of the owner). Celebrating a goal per se would not meet these requirements. However, if the image of the goal celebration was used in a commercial, the situation could be very different.

Gareth Bale is neither the first nor the last sportsperson to celebrate a goal or other sporting moment in this manner and it would be a strange world where a trade mark registration could stop someone from using that celebration ever again. However, it might be worth Bale considering registering the heart sign as a moving trade mark against goods similar to those covered by his other marks – this could potentially be relevant if a sportswear company wished to produce a commercial whereby the heart sign is used to sell football boots.

The rise of brand awareness in sports professionals since David Beckham blazed the trail over a decade ago has been gradual but constant. Considering ways of protecting their brand hopefully is a matter on which all rising stars (and those already established) are seeking advice. For many in this field, registering and exploiting trade marks can be a way to generate a profitable income independently of their day to day activities for club and country as well as providing an effective method of stopping others from taking advantage of their name or reputation.

First published in SportsPro - May 2013

Please note that since the date of writing this article, the UK and EU trade marks applied for by Gareth Bale have been registered.