Nike, Federer and the Intellectual Property of “RF”

Roger Federer stepped out on Centre Court today at Wimbledon to defend his gentlemen single’s title wearing all white.  Well, all white except for the Uniqlo logo embroidered onto his tennis shirt.  After numerous rumours top spinning around the tennis world that Nike and Federer would be parting company, a statement was released just before he stepped out on court confirming the departure. Many fans will be disappointed that the tennis ace will no longer be wearing their favourite brand, but it raises an interesting intellectual property question – why is the “RF” logo, that has been on many Wimbledon outfits provided  by Nike over the years missing from his current attire.

It had been rumoured over the last couple of weeks that Roger Federer had been in search of a new clothing sponsor.  Hard as it is to believe, one of the richest sportsmen in the world has been unable to negotiate a new contract with Nike.  Federer’s loyalty to Nike should not be ignored, however, as he continued to wear the kit in at Stuttgart and at Halle, after his contract had not been renewed. Tennis players do not appear to be immune to sponsorship issues.  Fans will remember that Simona Halep wore unbranded tennis clothing at the Australian Open last year after Adidas decided she was not worth the investment.  She since won at Roland Garros wearing Nike.

Similarities can be drawn between Federer and Agassi.  Agassi, who wore Nike his whole career, followed his wife Steffi Graf to Adidas towards the end of his career.  He played his last match at Wimbledon as well as the memorable US final against Federer wearing the German brand only to re-sign with Nike in 2013. Nike may be making the same mistake again by underestimating the value of all the images of Federer winning in the way they must have done with Agassi.  Only Agassi did not have his own logo.

The “RF” logo makes the relationship between Nike and Federer quite interesting from an intellectual property point of view.  The “RF” logo is a registered trade mark owned by Nike.  Now that sponsorship has discontinued, the big question, for all those owning the “RF” hats and t-shirts is: what happens to the logo?  Before getting into this question, it should be pointed out that Nadal may face the same situation, if ever his contract is not renewed.  His “raging bull” logo is a Nike trade mark.  It is only Andy Murray who has had the sense to register the trade mark in his own logo.  The “AM” logo that incorporated “77” was designed by Aesop Agency but registered by 77 Management Limited, a company in which Murray is the majority shareholder.

A registration of a trade mark confers a statutory right to the exclusive use of the mark in connection with the goods and services with which it is registered.  The proprietor of the registered mark will be able to sue for trade mark infringement if anyone uses the same or a confusingly similar mark in connection with the same or similar goods or services.

So Roger Federer will not be able to use the “RF” logo, without getting authorisation or a licence from Nike.  But could Nike use the trade mark they own without asking Federer?  You would think yes, Nike should be able to use a Nike trade mark.  You might even be able to imagine a line of heritage clothing made by Nike in memory of Federer’s accomplishments.

However, the situation is actually not that simple, ownership of the mark in this case may not mean free reign.  Nike may be stopped from using their own trade mark because a claim could be made that they are “passing off” their clothing as being endorsed by Federer when this is no longer the case.

This argument echoes the decision in Fenty and other v Arcadia Group Brands Ltd (t/a Topshop) – where Rihanna’s likeness was used on a t-shirt without her approval and she successfully sued for passing off.  Although the judge in that case noted that the decision was very specific to the facts, similarities can be drawn.  The relevant factors of that case were the image of Rihanna being similar to that of a recent album cover, Topshop already having links to Rihanna and Rihanna being a style icon.  The Court of Appeal said that that case was close to the borderline of sustainability.  However, those factors could easily apply to the “RF” mark and any clothing with the mark might be assumed to be endorsed by Roger Federer.

There are also issues with Federer using a different “RF” mark because any new mark would have to be sufficiently different to the existing mark so as not to cause confusion.  There is one very simple way around the issue though, should Federer ever want to have the “RF” mark on his Uniqlo t-shirt.  This would be for the trade mark to be assigned to him.  It is a relatively simple procedure and no doubt Nike would obtain sufficient consideration so both parties might just do it.  Who knows if and  when the “RF” mark will reappear on Centre Court.  In the meantime, we shall have to settle for two weeks of his trade mark forehand instead.

6 thoughts on “Nike, Federer and the Intellectual Property of “RF”

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