Sir Alex Ferguson and the disallowed trademark

Sir Alex's advisers tried to argue that the trademark should be made available for registration because of what is known as the "own name defence" -- ie that a trademark can not be used to prevent someone from using his own name in the course of trade, but this was understandably rejected by the hearing officer.  

Another football manager to await the outcome of his trademark application is Chelsea supremo, Jose Mourinho, who has made EU and UK applications in respect of his name for a number of different classes of goods.

Essentially Ferguson and Mourinho are trying to stop people gaining financially from using their names without consent. Merchandising is a very valuable market in relation to most sports, and football is the most valuable of all in the UK. 

The names of players and other prominent individuals in the sport have sufficient brand strength to warrant the time and expense involved to register them as trademarks. 

In Sir Alex's case, the problem was that goods bearing the Alex Ferguson brand could not be easily distinguished by potential purchasers from similar products sold by other suppliers. This was not a point in issue when David Beckham registered his name as a Community Trade Mark in 2000. We shall have to wait and see what happens to Mr Mourinho's application.

Problems like this frequently arise for celebrities, as befell the Princess Diana Fund and Elvis's estate. Because they are so well known and have great public appeal, there are often many products, both good and bad, on the market using the celebrity's name.

Essentially consumers do not associate those products with having any manufacturing connection with the celebrities themselves. It is cases like these that make the headlines and reawaken an interest in intellectual property. However, generally speaking, over the last 10 years there has been a greater awareness of the need to protect intellectual property and knowing how to utilise its worth.

Many businesses dismiss the issue of intellectual property and treat it as something that only high-end R&D companies, multinational brands or celebrities should pay attention too. This is not the case. intellectual property is something that all companies -- large or small -- need to consider, understanding it, protecting it and making the most of its value.

If you do not and you are basing your business on a brand, product or service and someone copies it or steps over the line, then without understanding your rights it is hard to prevent this type of infringement.

Although Sir Alex has been unsuccessful this time round, it has been reported in newspapers that he may be considering an appeal, partly on the basis that under human rights legislation the current judgement must be wrong. 

Otherwise, compared with ordinary people, celebrities are discriminated against when it comes to obtaining registered trademarks because, the more widely a name is used on products, the more difficult it is to obtain registered trademark protection in respect of that name. 

This is not an easy argument based on previously decided cases, but who would bet against Sir Alex being successful in obtaining a registration of his name in some form?

Intellectual property is something that all businesses should consider, whatever their size. What would you do if a competitor set up with the same or similar name and brand?  Your options will be limited if you have not protected what is rightfully yours to the best of your ability.

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