Roger Federer has been the come back kid in his tennis career many times before. He currently holds the record of winning matches after being two sets to love down. The 2018 comeback season that saw him take home two Grand Slams (Australian Open and Wimbledon) as well as the “Sunshine Double” of Miami and Indian Wells. But one comeback that was not on court (or even in court) was for the well known “RF” trade mark.

Fans (particularly those wearing RF caps) will remember when Federer stepped out onto Wimbledon Centre Court for his first round match against Dusan Lajovic wearing Uniqlo for the first time. This deal was reportedly worth $300 million over ten years and followed negotiations with Nike breaking down despite him being associated with Nike his entire career.

He still wore the “RF” trade mark on his tennis shoes and has continued to wear Nike branded shoes, despite no endorsement deal being in place. Although there were rumours he would move to Adidas (in a similar way Agassi did) Federer has kept wearing Nike Vapors X on court.

The “RF” Trade Mark

Nike decided against assigning the trade mark to Federer following the end of his endorsement deal. It was widely noted at the time (including on this blog here), that Nike probably chose not to use the trade mark for fear of an action by Federer in passing off (given his strong connection to the mark). On the other side of the net – Federer would have been infringing on the registered trade mark if he had used the mark (or something similar) without permission. The mark was in need of a tie break – it being probably one of the most valuable trade marks related to tennis, but not capable of making a return.

Tennis apparel fans will have noticed that Nike sold off a range of kit during the release of items for the US Open 2019 which was not linked to a player and was the last clothing to have the RF logo on it, although never endorsed by Federer. The clothing will have been designed and produced months in advance of the split and Nike will have wanted to recoup some of the costs of its production in selling it off.

Federer himself noted that at some point the trade mark would be able to come back to him in a probable reference to the 5 year time frame for a claim of non-use. Nike appear to have taken the view that at around the mid point of any such time frame, it is better to assign the mark (for perhaps some value) before losing it altogether and enabling Federer to pick it up for next to nothing.

Separately, Nike will be aware that it has a number of other valuable trade marks strongly linked to athletes in the tennis world (such as the Nadal bull horns design) and it will likely want to lay down a baseline marker to those athletes for any future negotiations.

Interestingly the UK TM (UK00002484445) and the EUTM (006819395) still appear to be registered to Nike Innovate C.V. But the US TM (No. 3838371) appears to have been transferred to Tenro AG as has the New Zealand mark and (perhaps unsurprisingly) the Swiss mark as well. It is likely that the assignment has covered all of the marks, but the various Trade Mark Registries are taking different amounts to time to change ends and update the register.

Tenro AG is a company reportedly owned by Federer but it remains to be seen how he will use the mark. No doubt he will continue to use it in conjunction with his Foundation (which featured the mark on the website throughout this episode).

Are there any risks using the “RF” Logo on other shoes?

Now the shoe is on the other foot it will be interesting to see whether the deal Federer has with On Running will evolve into an RF branded shoe, although the terms of the assignment by Nike may place restrictions on this. On Running have posted on social media that they do not have plans to introduce tennis shoes for Federer.

Whether the trade mark appears on a running shoe for one company and the tennis shoe for another company remains to be seen, but it would form the subject of an intriguing co-existence agreement. Or we might see arguments setting out the difference between a tennis shoe and a running shoe being put before the Trade Mark Registry. The question may well come down to whether a consumer, if they saw the trade mark on both an On-Running trainer and a Nike tennis shoe – would they think that On-Running and Nike were linked entities?

Separately, if Federer wanted to wear the logo on his Nike branded shoes and his Uniqlo branded sportswear questions of confusion could legitimately be raised as well. Brands are unlikely to want a competitor to sport a valuable trade mark and so it might be the case that the trade mark is removed from his tennis shoes once and for all.

A third and final set may well be on the cards.