Whether our society likes it or not, elite sportsmen and women and especially footballers are role models for millions of children and young people, and, consequently, the – we don’t know if we should say recent – tendency for some to register as Intellectual Property rights the gestures or movements they make to celebrate a success (goal, points, etc.) achieved in a sporting event has reached a rapid and very wide dissemination among the followers of the aforementioned sports professionals. Moreover, in the current technological context, in which immediacy in the dissemination of news and trends has practically ceased to be an advantage and has become an obligation. On the other hand, the imitation effect, which can always be expected in this type of situation, has been reinforced by the very scope of dissemination; in other words, sportsmen and women who are likely to register, use and benefit from this type of rights have detected their potential and, therefore, we can expect a succession of registrations of this type in the short term.
We therefore consider it interesting to make a brief analysis of the Intellectual Property strategy that inspires this trend:
At first glance, it might seem that this type of manifestations could be registered as movement marks. Taking into account the content of Article 3(3)(h) of the EUTMIR, which refers to movement marks as marks consisting of or including a movement or a change in the position of their elements, it seems clear that this would be one of the most appropriate forms of protection for the signs in question. If we look, for example, at one of the latest cases known to the general public – that of the footballer Daniel Olmo Carvajal – known in the world of football as Dani Olmo – we see that he has applied for (not yet registered, at least at the date of this article), a series of figurative marks that reproduce the last phase of the gesture with which the said player celebrates his goals, pointing to an imaginary watch that he would hold in his left hand. The marks in question are registered in classes 3, 18, 25 and 28 of the Nice Classification (which is the official list of goods and services in 45 classes for the purposes of trade mark registration), i.e. mainly for goods which may constitute merchandising and gifts, such as perfumes, accessories, clothing, toys and sports equipment. If the main purpose of protection had been to protect the gestures or movements involved in the celebration, we understand that the marks would also have had to include Class 41, which covers entertainment, leisure and sporting activities, among others.
The conclusion is, therefore, that not only in the case of Dani Olmo but also in others that have proliferated in the most popular sports, we agree that the public comes to know the trademark more than through the use of it as such, through the use that is made of another type of sign, in this case, the movement mark, without in this case being registered or such use referring explicitly to any product or service that the owner protects with its registrations. In other words, it is in this case a use of a trademark to promote another trademark and reinforce its notoriety. Time will tell if the strategy is the right one. In this case, the VAR will not come into play.
Article by Jaume Layola.
