1 July 2019Trademarks

ECTA 2019: How teamwork benefits sports IP

Launching a major new sporting competition means navigating a complex network of rights owners and parties, lawyers said on Friday 28 June.

Speaking at the 38 th  Annual  European Communities Trade Mark Association Conference, Michael Short, legal counsel at the Union of European Football Associations (UEFA), discussed the steps the football governing body must take when introducing a new tournament.

“We currently have two: the Champions League and the Europa League. But there will be a third one added soon,” he said.

In 2018, UEFA announced that it had approved the creation of a third, 32-team competition that will mirror the existing Champions and Europa Leagues.

But, coming up with a fresh and interesting, but also protectable tournament name is not an easy task, he added.

Short talked about the challenges surrounding the names of the current two competitions, which he said “suffer from distinctiveness issues at times”.

While the Champions League benefits from “years of goodwill and well-known status”, the Europa League, though registered, was more difficult to protect.

“Something which fits with theme but doesn’t suffer from lack of suitable protection and can stand on its own two feet is key,” Short said.

And a bit of healthy competition within the sports industry itself can improve the IP rights situation for everyone, he explained.

“You don’t want to quash the competition in the industry of sports, so when you seek new names and trademarks, it is often in the interest of your competitors to have some kind of similarity in name or style of branding.

“It means people are more willing to negotiate or settle and have discussions in opposition and clearance proceedings,” Short said. “Often you hear about litigation and friction, but sometimes in sports there is teamwork.”


On the topic of teamwork, Stamatia Tsirozi, a brand enforcement attorney at Red Bull, discussed the collaborative nature of the sports industry, where often parties hold joint events.

“When creating new logos and joint logos between two parties, there are a lot of challenges you can encounter,” she said. “For example, you take the IP from party A and party B and merge them together. We always advise from the beginning that in the contract there is a clear stipulation of who created what, and who owns what.”

Tsirozi said it can get particularly complicated when two parties work together to create a new logo without the use of any previous IP.

“If you don’t regulate ownership from scratch, in one year’s time there can be fighting over who created what in this new logo. Again, these things have to be cleared in advance,” Tsirozi said.

Anna Guix, an IP lawyer in football team FC Barcelona’s legal department, said one problem the club faces in enforcing its trademark rights is control over how the trademark is used.

For example, she described a situation in which a travel agency sells packages for hotels and accommodation for a certain football event.

“We often face problems with use when third parties use a particular trademark of ours to sell an event,” she said.

In this scenario, the brand must consider whether it should “attack” these kinds of use, whether opposing the use would be worthwhile, or whether allowing the use of the trademark could be beneficial for the brand.

Another topic of discussion was the law surrounding trademarks of event names, such as that of the Olympics where a date and place are combined. For example, the ‘Sydney 2000 Olympics’.

David Gill, a trademark attorney at Gill & Gill, gave the example of a past case, in which a German court ruled that the football World Cup name ‘Germany 2006’ could not be registered as it was descriptive.

Since then, the European Intellectual Property Office (EUIPO) changed its examination guidelines in 2017, ruling that examiners must refuse a country plus year mark.

“It causes great concern for these major events,” he said. “The EUIPO’s argument is that you can overcome this provisional refusal on the basis of acquired distinctiveness, but the problem is that event owners do not use the same city for each event. Sydney 2000 doesn’t help when you want to register Tokyo 2020.”

But, he said the EUIPO was not consistent in its decisions. For example, the mark ‘1976 Berlin’ was allowed to proceed to registration.

He said: “If the examiner is not aware of an event it is not descriptive, but if he is aware he raises an objection against all goods and services. This ignites a contentious debate.”

Broadcasting rights and piracy

One aspect of sports which can cause IP complications is that events are broadcasted across the world.

“Broadcasting rights for sports events are extremely valuable. The value of broadcasting could be 60-80% of the entire revenue, so the event owners want to sell these rights to the highest bidder,” Gill said.

Public broadcasters find themselves priced out of the market by cable channels, and consumers find they cannot watch major events on normal TV sets as it is behind a paywall, he explained.

“From an organisers point of view, there have been major developments recently in broadcasting,” Short said.

The main problem that arises is piracy.

“It is a constant issue for us which is getting worse, but there is a solution,” Short added.

One solution is the so-called “over-the top-platforms”, when coverage of the event is produced by the event organiser straight to a platform like Netflix, by-passing traditional broadcasters.

“Some sports organisers are doing that themselves,” Short said, noting that UEFA has launched its own version, which directly supplies match coverage to the consumer.

“That way, UEFA is more in control of the movement of copyright and can intervene,” he said.

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