Swiss tennis player, Roger Federer, has re-acquired the trade mark rights from sportswear giant, Nike, to the ‘RF’ logo that used to be displayed on his Nike tennis attire.
Two years ago, Federer was sponsored by Nike, who registered his initials as a trade mark in 2010. In 2018, and in a record $300 million deal, Federer announced a new collaboration with Uniqlo, the Japanese clothing brand. At the time however, Federer could not take his ‘RF’ logo along with him to be used on Uniqlo clothing; the logo remained the property of Nike and it was not willing to transfer the rights until all of the merchandise bearing his initials had been sold.
Now, after a long wait, the trade mark has been successfully transferred to Tenro AG, Federer’s commercial management company, who plan on working with Uniqlo to release new ‘RF’ branded merchandise. Federer announced the news on social media platform Twitter at the start of December 2020.
It may come as a surprise to people that Federer was unable to use his own initials in his collaboration with Uniqlo and exploit his name alongside its clothing. In the absence of any agreement, it is the owner of an intellectual property right who is entitled to commercially exploit it hence why Nike were able to continue selling the ‘RF’ branded goods despite the fact Federer had signed the Uniqlo deal. Much like physical property, intellectual property can be bought, sold and licensed. Nike has now sold its rights in the trade mark to Federer’s own company, Tenro AG. Having learnt from his mistake, Federer’s company is now licensing the use of the mark to Uniqlo in so that the mark can be used on his line of clothing with the brand but his company still remains proprietor of the mark. Licenses can be useful in situations where you wish to retain your intellectual property rights but allow complementary businesses the ability to monetize the intellectual property in a way in which you are not able to.
The only question that remains is: when will Federer play next? After two knee surgeries during lockdown, we can’t be sure of when he will be showing off his new line of merchandise.
If you have any questions in relation to infringement of IP, licenses, assignments or any other IP rights, please don’t hesitate to contact the team at McDaniels Law on 0191 281 4000, or by email at firstname.lastname@example.orgPosted by: Megan Walker in: Trade Marks