The footballer’s successful registration of trade marks to protect his identity from unauthorised use is a reminder of how valuable “assets” can be protected.
Applications
Earlier this year, Cole Palmer submitted trade mark applications for the following:
- His full name
- His nickname (Cold Palmer)
- A motion of his well-known shivering goal celebration
- An image of his signature
- An image of his face
The applications covered a wide range of goods and services including clothing, food and games.
During the two-month opposition period, his application for “Cold Palmer” was opposed by Château Palmer, a wine producer in France. This was resolved by Cole Palmer’s team adding a limitation to the application to exclude wine from the scope of the trade mark. This is a very common device to enable owners of trade marks covering the same classes of goods and services to co-exist.
The trade marks mentioned above have now been registered, meaning Cole Palmer should be able take legal action against any third party who uses them without the necessary consents or licenses in place. This type of action is usually more straight forward where the trade marks have been registered (as compared with situations where they have been used on an unregistered basis).
Practical considerations
The specifications for Cole Palmer’s trade marks cover a wide range of goods and services which go well beyond the sports industry. Although this is beneficial as he can enforce these rights broadly, it is important to remember that the IPO can reject an application for being too broad (as discussed in a previous article). Similarly, if a dispute were to arise in the future, he may need to show that he has actually used the trade marks in relation to the relevant goods/services within his registrations.
Trade marks only offer protection in relation to what is registered. In the context of a more conventional registration of, for example, a business’s logo, the registration of one logo would usually not assist the business if a third party used another (unregistered) logo belonging to the business without its permission. In the more unusual context of Cole Palmer, it is unlikely that he would be able to enforce his shivering goal celebration trade mark against another Premier League player who used the same motion because a key element of the trade mark is his face. However, the registration may still have a deterrent effect, for example to deter businesses using the motion to promote unauthorised merchandise.
Comments
When people think of trade marks, they usually only think of names and logos. Cole Palmer’s portfolio is a reminder that a brand is more than this and while some of his trade marks are quite unique, he reminds us that the key elements of a brand can be very valuable and failing to protect them could be detrimental – unregistered trade marks have less of a deterrent effect and enforcement of unregistered trade marks tends to be more difficult and costly.
Cole Palmer is also a good example of the ongoing commitment a brand should have when it comes to protecting its intellectual property. Whilst his current registrations seek to protect his identity, he submitted new applications last month for the word “Cole” and a logo made up of the letters “CP”. These new applications are not directly linked to his identity which means that if they proceed to registration, he could enforce these rights on a much wider scale.
If you have any questions as a result of this article, please contact us at [email protected].
Article contributor, Louise Tindall, Graduate Apprentice Solicitor
