Important lessons for athletes from the Nike / Federer “RF” logo dispute – Dan Parkes writes for the LawInSport
10 / 08 / 2018
While Roger Federer has triumphed on hard courts, clay courts and grass courts, he could now have a tough match-up against his former sponsor, Nike, as to who should retain the rights to his well-known “RF” logo, (the RF Logo).
Indeed, the ongoing debate was the reason the eight-time Wimbledon champion’s attire did not feature the RF Logo at this year’s championship.
The issue arose following Federer’s switch to a new sponsor, UNIQLO, after ending his long-running sponsorship deal with Nike in March 2018. While Federer has been using the RF Logo since 2006 and was even involved in the design process himself, it was Nike who registered the RF Logo as trade mark and thus have ownership of it and, in principle at least, the corresponding right to stop third parties, including Uniqlo and Federer himself, from using it. Accordingly, in the absence of any clause to the contrary in his sponsorship agreement with Nike, Nike retained ownership of the iconic symbol when the deal ended.
The Law of Trade Marks
In the UK, the relevant law surrounding trade marks is relatively straightforward. Under the Trade Marks Act 1994, a trade mark’s registered proprietor has the exclusive right to use and licence its trade mark. A trade mark can in essence be treated like an item of property. If Nike own the trademark, unless Nike agree to transfer ownership of the trade mark (by way of a trade mark assignment) or grant Federer sufficient rights to use the RF Logo (by way of a trade mark licence), from a purely legal standpoint, he has no right to use it.
Own Name Defence?
Trade mark law does provide what is known as an “own name defence” to claims of infringement. However, to rely on this defence the use of the name must be “in
accordance with honest practices in industrial or commercial matters”. Accordingly, it is doubtful whether Federer could rely on this defence should he continue to use of the RF logo without Nike’s consent. It seems unlikely that Federer’s continued use of the RF Logo would be considered “in accordance with honest practices” since he has a pre-existing agreement with Nike governing its use. It is also unclear whether the defence would cover his initials rather than his full name.
It is important to note that we are not aware of the terms of the sponsorship agreement between Nike and Federer. The commercial agreement is confidential, and likely to remain so. Nike do appear to have a strong legal position. However, refusing to allow Federer to use the RF Logo could be a risky PR move, with negative repercussions in public opinion, especially amongst the Federer-faithful.
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