Sprinter Mujinga Kambundji has filed her name for trade mark protection with the Swiss Federal Institute of Intellectual Property (IPI). She’s not the only Swiss professional athlete to go down this route. What do they to hope to gain from trade mark protection? And can the average Swiss person register their name as a trade mark?
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Mujinga Kambundji has already cleared many hurdles in the world of sport. But on 3 October 2022, she overcame an obstacle off the running track: the Bernese athlete filed an application for a trade mark with the IPI, which was subsequently registered by the trade mark examiners. “As a top athlete, I know how important registered trade marks are. My sponsors and the organisers of major sporting events also have registered, established trade marks,” says Mujinga Kambundji. The trade mark application was filed by an attorney on her behalf.
She’s not the first professional sportsperson to go for trade mark protection. Skier Ramon Zenhäusern has three protected trade marks. One of the most famous entries in the register belongs to recently retired tennis star Roger Federer. And a few years ago, footballer Granit Xhaka made headlines for his filing. Athletes often protect their names and logos.
Value increases with sporting achievements
Sportspeople protect their names as trade marks because they can turn into valuable assets. As an athlete’s fame increases with their sporting success, their trade mark can become a valuable source of income for when they retire.
Owning a registered trade mark also provides the international sports stars a legal advantage. According to the Swiss Civil Code, every person in Switzerland has rights relating to their name. In other countries, however, protection under civil law is often not as extensive. Professional athletes from Switzerland therefore do not hold the best cards abroad if they rely solely on their name rights. “In such cases, it’s a good idea to file for trade mark protection. It makes commercial exploitation and enforcement considerably easier,” says Bernard Volken, a trade mark attorney with the law firm Troller Hitz Troller.
Third parties who use the name Roger Federer on a product, for example, can be halted thanks to trade mark protection. Mujinga Kambundji also told us that her trade mark rights are ‘an important addition’ to her name rights.
Better cards in licensing negotiations
According to Bernard Volken, another advantage of owning a registered trade mark is that it makes licensing negotiations easier because it provides a certain level of security. When third parties pay licensing fees to use a sports star’s name, they want to be sure that the name is also sufficiently protected and that a certain amount of exclusivity is guaranteed. “A protected trade mark provides this guarantee because it can’t be used by just anyone. Those who invest expect a return on their investment,” says Bernard Volken.
“Precautionary measures, used in very urgent cases, are more likely to be granted by courts if they are supported by documents from the trade mark register,” says the attorney from experience.
Registered trade marks have a preventative effect, too, because they appear in trade mark searches. This also makes it easier to obtain domain names. According to Bernard Volken, big sports brands like ‘KJUS’ and ‘SCOTT’ would never have been able to achieve such success without trade marks, even though their founders have name rights.
Less is more
When filing for protection, applicants must specify the classes of goods in which they want to market products or services. In theory, you can choose all of the classes, as in the case of footballer Granit Xhaka. But does it make sense to do so? “The sportsperson has to think about where they see themselves in five years and in which areas licensing would be possible. Selecting a large number of classes should be approached with caution because, five years after the filing, the trade mark must have actually been used in the classes of goods specified,” explains Bernard Volken. Too limited a scope of protection prevents any useful differentiation. Too broad a scope of protection makes the trade mark and the athlete unnecessarily vulnerable. The solution is a tailor-made trade mark strategy.
A sportsperson should think about trade mark protection from an early stage. “This minimises the risk of third parties securing their trade mark rights to make a profit,” advises Bernard Volken.
In Switzerland, anyone can protect their name as a trade mark (sporting success is not a requirement). However, Bernard Volken points out: “Because private individuals generally don’t license their names or use them commercially in any another way, it usually makes little sense for them to register a trade mark.”
Trade mark protection and elite sport (Video)
Registering a trade mark: what you need to know
In every SME, there should be someone responsible for trade mark protection.
When a trade mark application is filed, the IPI does not check whether an identical or similar sign has already been filed or registered.
So before applying, it’s important to carry out a search to be on the safe side. It’s up to the applicant to assert their rights.
When you file a trade mark application, you have to assign it a class of goods and services. Think carefully about where your trade mark belongs.
Once the trade mark has been applied for, it’s provisionally protected until it’s eventually registered.
You must defend your protected trade mark yourself.
Applying to register a trade mark for later use isn’t worth it because you actually have to use it.
Claims for protection against third parties can only be asserted after registration. However, it’s the filing date that determines who holds the earlier right.