Trade Marks And Sport

• Published date: 16 May 2023
• Subject Matter: Intellectual Property, Media, Telecoms, IT, Entertainment, Trademark, Sport
• Law Firm: ENSafrica
• Author: Mr Tevin Jones

This article deals with recent trade mark matters involving famous sporting brands.

Nike

Taking it to the Max

There's a young whippersnapper who drives very fast, an uber-confident young man, called Max Verstappen. Max has taken over Formula One, a sport that was dominated by a certain Lewis.

Trade mark application

Like all sports stars, Max Verstappen knows that his fame has provided him with commercially exploitable intangible IP assets that he is very keen to protect. Somewhat predictably, Max wants to launch a clothing brand using the name MAX 1. In December 2021 Max filed a Benelux trade mark application for MAX 1 for clothing, as well as retail and entertainment services.

Trade mark opposition

Max's trade mark application unfortunately spun off track - the application was opposed by a veritable sporting giant, Nike, the owner of the trade mark NIKE AIR MAX that has been in use since 1987.

The finding

The Benelux Office for Intellectual Property (BOIP) upheld Nike's opposition. Here are some of its remarks and findings:

• Same goods: 'The goods of the contested sign are partially identical and partly similar to the goods of the (NIKE AIR MAX) trade mark.'

• A perceived sub-brand: 'Since it is common practice in the clothing sector for the same mark to be configured in different ways, the relevant public might also think that the contested sign (MAX 1) is a sub-mark of the opponent (Nike).'
• A likelihood of confusion: 'There is a likelihood of confusion in the sense that the public may believe that the goods covered by the trade marks invoked and those of the contested sign belong to the same undertaking or, as the case may be, from economically linked companies.'

No home town decision

Max will have been bitterly disappointed by the BOIP's decision. After all, Max is the home town boy, a resident of the 'NE' portion of the Benelux...the Netherlands.

Puma

Puma applied to register the trade mark PROCAT for footwear and headgear in Canada. The company Caterpillar opposed the registration of the trade mark on the basis of its trade mark registrations for CAT for the same goods. The Canadian IP Office dismissed the opposition.

The matter went on appeal and the Federal Court overruled the decision and ruled that the trade marks are similar and the goods are identical. As regards the term 'pro', the court said that it is commonly used to suggest high quality, and therefore did not distinguish the trade marks.

Umbro

Iconix is the company behind the Umbro...