This article is written by Shristi Roongta who is pursuing an Introductory Course: Legal Writing For Blogging, Paid Internships, Knowledge Management, Research and Editing Jobs from LawSikho.
Table of Contents
Introduction
Trademarks are an identifiable sign, label, brand, word, logo which distinguishes a product of one company from the product of another company. It is a valuable asset that builds trust, confidence, and loyalty among the people who believe that this particular trademark will provide the best and quality products. Trademark is a brand that helps the customer in recognizing the product and the particular company.
A trademark of any company gives a sense of confidence and loyalty, it helps the people to choose the product of their choice. When one goes to purchase a mobile phone, search for a particular brand. Why so? He can take another brand that has less value but he takes one particular brand, for example, Apple. This is because he has trust and confidence in that brand, he trusts that Apple will serve the best quality and has a brand value. The same is for the trademark of the sport. A sports trademark is a valuable asset that builds confidence and loyalty to a product. Many reputed brands are globally renowned and by looking at their logos, one can identify its company.
For instance, in the sporting arena, Nike’s swoosh and Adidas’s three stripes have a huge and renowned brand value, everyone can easily recognize their company from the logo and trust its service. The sales are also improved because of the trademark, the jerseys, shoes, jackets of these reputed companies make the accessories more valuable due to their trusted quality. They are central to many business transactions, especially sports sponsorship deals and product merchandising, and they can be colors, shapes, sounds, or even smells. Therefore there is a high chance of exploitation of these intellectual property rights.
Trademarks are the only intellectual property rights which are renewable as long as it is used commercially. It may be protected by filing an application for registration with a national or regional trademark office and paying the required fees. A trademark can also be internationally protected either by applying with the trademark office of each country in which protection is sought or by applying with World Intellectual Property Organization (WIPO)’s Madrid System.
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Trademarks are powerful and indispensable tools. In sports, trademarks are used to create commercial values. With the globalization of trade, the trade name, brands have gained immense value and recognition which is required for minimum standards of protection and efficient procedure for enforcement as were recognized under the Trade-Related Aspects of Intellectual Property Rights (TRIPS) so for this Indian Trademark Act, 1999 was enacted. This act provides for the registration of device, brand, label, name, word, signature, etc. in various goods and services under which the proprietor intends to use his mark. Under this act, an applicant initiates both civil and criminal remedies in case of infringement.
By protecting the trademark, a sports person, organization or association can ensure that the value and integrity of the event are maintained. There will be maximum commercial revenue from sponsorship, merchandising, and licensing and the confidence of the customer will also be retained and legitimate.
Indian perspective of sports
Sports has always been a massive sector of entertainment. With the rapid change and evolution, sports now has also become a sector of business. In India, the sports industry has become bigger with time and today it is one of the most promising entertainment and business industries. Cricket has been a great sport and has for decades in India. There is one sporting event in India, the Indian Premier League (IPL), the most exciting and popular event of India where different states participate and the other is T20-20. Board of Control for Cricket in India (BCCI), a national governing body for cricket in India which organizes these domestic sporting events. BCCI has its trademarks in the Cricket events organized in India. BCCI has registered the name and logo of its one of the most popular and beneficial events, Indian Premier League (IPL). The logo and trade name of IPL was infringed many times.
In 2008, BCCI filed a suit against rediff.com, an online gaming company. BCCI filed a suit for the infringement of trademark or domain name Indian Fantasy League (IFL) and a logo depicting a batsman playing a shot in a game, as they were similar to BCCI, Indian Premier League (IPL) trademark and logo. The Madras High Court gave the judgment that IFL cannot use the name and logo as this amounts to trademark infringement.
Another case of the same issue. In 2018, the BCCI filed a case of trademark infringement against Grace Sports Pvt Ltd (GSPL), for using the trademark “Indian Junior Player League Twenty 20” and the domain names www.ijplt20.com and www.juinorsipl.com. BCCI filed a suit against GSPL also for organizing an IPL like a tournament for junior cricketers aged between 14 and 18 years. The Bombay High Court banned GSPL from infringing BCCI’s trademark “IPL” in any manner.
Not only the trade name or logos are infringed but also the celebrity’s name which is registered as trademarks are infringed. The celebrity trademark their names or surnames as part of a domain name. The celebrity, including the players, has their fame and popularity as their intellectual property rights and their name or fame are also used in an unauthorized manner.
In Sourav Ganguly v. Tata Tea Ltd, where Sourav Ganguly, a popular and former cricketer and captain of team India, discovered on returning to India after a successful session at Lords, that a well- known tea brand which employed him as a manager was cashing in by offering consumers the chance to congratulate him on his success. The offer implied that he had associated himself with promotions which he did not. He challenged this behavior and successfully settled the dispute amicably. The court ruled that his fame and popularity is his intellectual property rights.
Sponsorship in sports
Sports fans are emotionally connected to their favorite teams or leagues. For example, sports club like Manchester United, leverage their brands and loyalty of their fans to increase the club’s revenue and profitability through sponsorship deals and new digital media and content opportunities. Sponsorship is the financial support for a sport including any event or organization by an outside body. Sponsorship is a part of an investment in which both parties are benefited. Sponsorship is at every level of sport be it sponsoring a logo, brand, or any products. The sponsoring body provides finance by displaying banners during the sports events or on the jersey or sports gears of the players. All the sponsorship advertisements are displayed during the matches and in between the breaks.
Sponsorship in sports has a powerful and impactful effect on marketing. It attracts a large number of customers which increases the sale of the product, increases the profits of the company so sponsorship in sports can be called a big business. In the popular sport games, such as IPL in India, many well- known companies such as Star India, Coca-Cola India, Amazon, Maruti Suzuki, and many other sponsors the teams, their sports gears or the players, whereas the sports-related companies, Puma, Nike, Adidas sponsors the shoes or other sports products in the event. The biggest and official sponsor is Vivo Electronics, hence the event acquired the title of Vivo IPL.
According to sports marketing experts, this year IPL has a hike of an average of 25% in their collecting around Rs 500 crore, and last year they earned around Rs 400 crore. Another example is of Fédération Internationale de Football Association (FIFA), the most famous football world cup game across the world. FIFA 2018 sponsors were Adidas, Vivo, Hisense, Budweiser, McDonald’s, and few others. Among these Vivo and McDonalds sponsors 40 million Euros and $10-25 million respectively a year until 2022.
Merchandising
Merchandising means the promotion of some event for the sale of goods and services by making them available at retail stores or on online platforms or websites. Some sports organizations use their trademark and other intellectual property rights to leverage the value of their brand by licensing them to a third party. In merchandising a person sells his trademark such as jerseys, shoes, caps, or logo to other people in exchange for royalty by a merchandising agreement.
It is one of the sources of income for sports organizations. Every sports team or organization sells the replica of apparel, shoes, and caps. In IPL, every team representing IPL, Kolkata Knight Riders, Mumbai Indians or Chennai Super Kings, etc. all these teams sells the accessories on their official website or Amazon, Flipkart. In other sports such as football, basketball, or tennis every other sports team or player sells their trademark or merchandise. Trademark plays an important role in protecting the logo and merchandise from unauthorized use and counterfeit.
For example, Kolkata Knight Riders (KKR), a franchise team of IPL, sells their merchandised goods and apparel. It has the logo of the team represents a “Knight” with his Viking helmet armor and the shield embosses the team name. KKR team has the tagline, “Korbo Lorbo Jeetbo Re“, which needs to be protected from unauthorized use by trademarks. Sportsperson like Cristiano Ronaldo has his merchandise under his trademark “CR7” which sells different merchandised products.
Domain name
Domain names are easy to remember names or initials and can be found easily on the internet. A domain name can be referred to as an “online identity” of one’s business and it is an integral part of the businesses having any online commercial activity. Domain names are not just names of websites of different entities but serve as business identifiers and promoters. Some may refer to domain names as the online equivalents of trademarks. The Internet is based on IP address and therefore every server requires a domain name. Domain name performs the same function online, which the trademarks perform offline in the business dealings and transaction.
Hence can be registered as a trademark or service mark. In the sports industry also many sports personalities have registered their names or initials as domain names such as Sachin Tendulkar, Cristiano Ronaldo, Lionel Messi, etc. have registered and gained revenue using their popularity. Not only players but also the government or private bodies are registering their domain name as a trademark. Like BCCI has registered its IPL name as a trademark and filed a suit against using the name in any form.
The domain names as trademarks are registered and protected by one organization globally which is the Internet Corporation for Assigned Names and Numbers (ICANN). In India, domain names may be granted protection as a trademark or service mark under the provisions of the Trademarks Act, 1999 provided that the domain name fulfills all requirements to be properly registered under the Act. In Bigtree Entertainment v. Brain Seed Sportainment, the Delhi High Court denied the plaintiff, www.bookmyshow.com an interim injunction against the defendant’s use of domain bookmysports.com. The court, considering that the prefix BOOK MY of the Plaintiff’s trademark BOOKMYSHOW was descriptive, not an arbitrary coupling of words, and the Plaintiff’s failure to prove that “BOOK MY” has acquired distinctiveness or secondary meaning, dismissed the application for interim injunction filed by the Plaintiffs.
Personality rights
Personality rights or image rights mean the right of a person related to his or her personality. It is referred to as the right of publicity, protect against the unauthorized appropriation of an individual’s persona which could result in an unearned commercial gain to another. A celebrity is a well-known and popular person whom the whole country knows. Similar to the sportsperson. A sportsman is also a celebrity and is very popular across the world. So it’s very easy for anyone to misuse his personality or image for his commercial gain.
Therefore, a sportsman needs to register and protect his name or logo or sign. Every person or organization related to particularly in sports should register and protect their name, logos as a trademark as personality plays an important role. Sports personalities can register themselves as trademarks, their names, nicknames, surnames, poses, signatures, slogans, and moves, and for which they are known very well. For example, Usain Bolt’s “Lightning Bolt” and his slogan, “to di world” are registered trademarks. Even if a celebrity or sports celebrity does not register his name as a trademark still they have personality rights that need to be prevented from unauthorized use.
In India, there is one statute to protect personality rights that are Article 21 of the Constitution of India under the right to privacy and right to publicity. No statute or law protects personality right in India. But now India has started recognizing the importance of personality rights through judgments. One of the most significant judgments related to personality rights were given in ICC Development (International) v. Arvee Enterprise, in this case, Delhi High Court held that “The right of publicity has evolved from the right of privacy and can inhere only in an individual or in any indicia of an individual’s personality like his name, personality trait, signature, voice, etc. An individual may acquire the right of publicity by his association with an event, sport, movie, etc.”
One of the most recent cases is of Gautam Gambhir v. D.A.P & Co. & Anr. In this case, the defendant was using the name Gautam Gambhir in running their lounge and restaurant which was mistaken by people to be associated with Gautam Gambhir, the former Cricketer of the Indian Cricket team. Thus he filed the suit against the defendant. But the interim injunction was not provided as the defendant’s name was also Gautam Gambhir and he never claimed that his business is related to the cricketer. Hence the Delhi High Court dismissed the case.
Conclusion
Sport is an important field and popular industry. In this area, sportspersons are celebrities who register their trademarks to protect them from unauthorized use. Not only has the players but the governing body also protected its trademarks. So there is a huge chance of exploitation of their name or logo or slogan so in all these situations, the intellectual property rights come into play and protect the person’s rights by trademarking it. A sportsperson earns his name and fame which needs intellectual property rights to protect it from exploitation.
Hence, intellectual property rights have a vital role in the protection of sportspersons or organization rights. Every person who registers his or her trademarks has the right to it. In the sports industry, also every player and the governing body has the right to register and protect his or its trademark in the form of a domain name, personality rights, or merchandising.
References
- https://www.wipo.int/ipsport/en/#:~:text=IP%20rights%20are%20the%20basis,development%20of%20the%20sports%20industry.&text=A%20sports%20shoe%20may%20be%20protected%20by%20several%20IP%20rights%3A&text=
- https://www.wipo.int/ip-sport/en/branding.html
- https://www.mondaq.com/india/trademark/164974/intellectual-property-rights-in-sports-indian-perspective#:
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