Advantage Federer: return of the "RF" logo

Swiss tennis legend Roger Federer has formally announced the long-awaited return of the “RF” logo, ending a two-year wait since he has been able to wear and market the iconic apparel. Delivering the message to fans via social media, an excited Federer proclaimed that “the RF cap is back!”, displaying a new range of branded UNIQLO products.

We look at why the famous trade mark has been out of Federer’s grasp until now and how ownership issues can arise between sports stars and commercial brands, even where the athlete’s own name or initials are involved.

Background

Roger Federer, widely regarded as one of the greatest male tennis player of all time, has been entertaining audiences since the early 2000s and has become one of the most recognisable figures in global sport.

Federer first sported the “RF” initials at Wimbledon in 2006, embroidered in gold on his iconic white blazer. The concept for this logo originated with Federer’s wife, Mirka, who had developed it for a fragrance introduced in 2003. The fragrance line was discontinued, but Federer wanted to retain the “RF” logo concept and approached Nike, who modified and evolved this design to the logo seen today.

Despite a long and successful partnership with Nike lasting over two decades, Federer signed a lucrative commercial deal in 2018 with Japanese clothing brand UNIQLO, estimated to be worth $300 million. This parting of ways with Nike therefore raised some complexities regarding the future exploitation of the “RF” trade marks, which had been registered by Nike in various jurisdictions, including as a UK trade mark in 2008 and as an EU trade mark in 2009. The copyright in the logo design may also have vested in Nike and at the time of the split, the Swiss star acknowledged that: “the RF logo is with Nike, but it will come to me at some point." [i]

Transfer to Federer

On the face of it, Nike would have been in a good position to continue exploiting the trade marks independently and to stop third parties (including Federer and UNIQLO) from using this logo for the various goods/services covered by the registrations. The reality is however somewhat different, both from a legal and commercial perspective. For example:

• A trade mark may be cancelled under UK/EU law if the use of the registration is “liable to mislead the public”[ii]. Arguably, by exploiting this mark without Federer’s involvement, this could mislead consumers that the products bearing the RF logo are still endorsed by the Swiss star.
   
• If Nike used Federer’s name in the course of trade to sell these products without a licence, this may also risk infringing the “ROGER FEDERER” trade marks registered in his own name.[iii] It is likely that the commercial agreement between Nike and Federer would also have included certain post-termination restrictions on Nike’s ability to continue using Federer’s name and likeness.
   
• Leaving aside any legal issues, Nike would risk adverse publicity and losing the custom of the ultimate fan base by commercialising the products against the will of its former ambassador.

In any event, these ownership issues have seemingly now been resolved and earlier this year the “RF” trade marks were assigned from Nike to Tenro AG, a Swiss company established by Federer. The delay in the transfer was reportedly due to Nike’s insistence on having a transition period to sell off existing Nike/RF clothing, which Federer has not worn on court since playing a tournament in Halle in 2018. Given Federer’s confident statements to the media about ultimately regaining control of the logo, there may well have been existing provisions in the agreement with Nike to deal with this transfer process and the sell-off period.

Now, following the social media announcement on 1 December 2020, Federer and UNIQLO are finally ready to launch the new merchandise, starting with a range of RF caps.

Other Sporting Trade Mark Tussles

Roger Federer is not the only high-profile sports star to run into brand ownership issues in recent years. By way of example:

• British Formula 1 driver Lewis Hamilton recently lost his bid to prevent Swiss watchmaker Swatch from registering “Hamilton International” as an EU trade mark. Since the disputed mark included the sole word “Hamilton” and not “Lewis Hamilton”, it was not – as the F1 star argued – an impediment to fair competition.
   
• As reported here, Argentinian football star Lionel Messi won a nine-year legal battle against cycling brand “Massi”, enabling him to register his name for use on sports equipment and clothing. The CJEU acknowledged that Messi’s outstanding reputation in the world of football and beyond meant that consumers would associate the name Messi with him, despite its similarity to the pre-existing “Massi” brand name.

The personal brands of athletes are highly valuable commercial assets, particularly in an age where social media sites such as Instagram provide a platform to interact with fans and promote their brands through commercial endorsements. It is therefore unsurprising that sporting royalty such as Hamilton, Messi and Federer will go to significant lengths to protect these brands.

Comment

Whilst the ownership of trade marks for an athlete’s name will be straightforward in most cases, intellectual property generated under commercial collaborations can create potential for conflict, particularly following a breakdown in the relationship. From the athlete’s perspective, pushing for ownership in brand assets at the outset of a commercial collaboration (and perhaps granting an exclusive licence for the duration of the relationship) will help to avoid some of these complications.

However, the leverage to make these deals with vary between athletes and Nike is not the only sports brand to take the lead in trade mark filings. Under Armour has launched collaborations with NBA star Steph Curry and golfer Jordan Spieth, with trade marks for Curry’s “SC” brand and Spieth’s “JJS” logo both filed in the name of the US sports company. This may therefore be a trend that continues.

For young stars that sign long-term commercial contracts at the outset of their career, thinking about the future exploitation of personal brands is an important consideration. However, sponsors such as Nike and Under Armour will inevitably play a key role in driving the commercial success of such brands and there may be good reasons for allowing these companies to retain control of trade marks for the duration of a commercial collaboration. The key issue will be ensuring there is a clear mechanism for the athlete to regain ownership of personal brand assets as quickly and smoothly as possible once a relationship ends.