African footballers, learning to play IP

Mo Salah, Sado Mane, Pierre-Emerick Aubameyang, Kalidou Koulibaly, Naby Keita, Andre Onana, Nabil Bentaleb, Eric Bailly, Riyad Mahrez, Victor Wanyama.

If you enjoy your sport, you will know these names. They are all great footballers. They all play for top European clubs. They are all African.

African footballers plying their trade in Europe face the same question that all professional footballers face: How can I supplement my income through commercial activities?

The answer is simple - intellectual property (IP), particularly trade marks. Once footballers know this they have lots more questions. Questions that the likes of Lionel Messi and Cristiano Ronaldo already have the answers to. For example:

Why would I want to get involved with trade marks? Answer. As a result of your fame you have valuable properties (trade marks) that you can use to create significant income. But you need to get these registered.

What are these properties, these trade marks? Answer. Your name, your nickname, your signature, your catch-phrase, your likeness, your goal celebration (Gareth Bale has registered his), the sound of your voice. It may even be something you have created like CR7, one of Ronaldo’s trade marks. The possibilities are endless.

So what happens after I have registered these trade marks? Answer: Well, as it is unlikely that you are going to start manufacturing goods or offering services, you will link up with companies that are interested in having a famous sportsman associated with their products. They will pay you a royalty. You will keep an eye on the products to make sure they are up to scratch. This is called trade mark licensing.

What goods and services are we talking about here? Answer: Basically any product areas that present licensing opportunities. There are some obvious categories like clothing, fragrances and games. But why stop there - do you know that it is possible to stay in a CR7 hotel?

So this is all linked to my fame? Answer: Pretty much, fame will take you far. When Lionel Messi filed an application to register the name Messi as a trade mark for sporting goods in Europe the application was opposed by the owner of an earlier registration for Massi. A very solid-looking opposition. Yet the court accepted Messi’s application, saying that even though the two trade marks look and sound similar, everyone knows who Messi is, so there will be no confusion.

Where would I register my trade marks? Answer: Consider where products featuring your trade mark are most likely to sell. You will undoubtedly be looking at Europe (using the EU-wide registration system), you will probably want to look at some of the consumer giants in Asia, and the USA is always a big market. But it is quite possible that you will want to protect your trade marks in football-mad Africa. A continent that offers an interesting array of trade mark registration opportunities - national registrations, regional registrations, international registrations.

So trade marks can be protected in Africa? Answer: Fair question, there is a perception that Africa is an IP backwater. But that simply is not true anymore - a number of African countries (recently Sierra Leone, Namibia and Malawi) have completely updated their trade mark laws in order to bring them into line with international standards. These updates generally cover all sorts of aspects, such as the fact that a trade mark can be far more than a word, the fact that trade mark owners need generous enforcement rights, and the fact that well-known marks need special protection.

We are also seeing far more trade mark court decisions in Africa. We recently had one in Nigeria confirming that a local agent cannot steal its foreign principal’s trade mark. We had one in Kenya confirming that a trade mark application can be opposed on the basis of an unregistered trade mark right. We had one in South Africa making it clear that in order to qualify for protection as a well-known mark, a mark must be known by the relevant public, which in the case of a clothing retail mark (Primark in this case) means people from across the spectrum, and not simply wealthy individuals who travel abroad and are exposed to foreign brands.

If I get involved in trade mark registration and licensing will that raise awareness of the importance of trade marks and IP in my home country? Answer: Quite possibly. But it would be wrong to believe that there is not already significant awareness of the importance of IP in Africa. Governments in Africa are acutely aware of how important IP is for economic growth. As a result we are seeing governments publish official IP policy documents. We saw this in South Africa and Ghana. In 2018 the Zimbabwean authorities published an IP policy document that expressed the hope that IP ‘can be exploited in order to turn around the economic fortunes of the country.’

Great footballers are sometimes said to have an eye for goal. All professional players should make it their goal to maximise their fame through trade mark licensing.

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This article was first published in Business Day.

Date published: 14 May 2019
Author: Spoor & Fisher

Tags: trade marks ip football world ip day