What's in a name? That which we call a trademark...

© Leonard Zhukovsky – 123RF.com

The US Trademarks register shows that Nike is in fact the registered owner of Federer’s RF logo, an arrangement that is very common in the high value deals struck between sports stars and their corporate sponsors.

Another aspect of the intellectual property rights relating to the RF logo is copyright. It has been reported that the RF logo, which is essentially a monogram comprised of Federer’s initials, “RF” was first conceptualised by Federer’s wife and father for use on his fragrance range in 2003 and that it started out as a simple freehand scribble. Federer liked the concept of a monogram and took it to Nike, suggesting that they use it to develop a branding strategy. Against this background, it appears the RF logo, as it stands today, was developed by the Nike creative team.

Since the logo was probably commissioned by Nike or designed by an employee in its creative team, it is likely that Nike also owns this copyright, as even though the concept of the monogram was reportedly devised by Federer’s family, copyright does not recognise rights in a concept, per se, and such rights will only exist in the material expression of the concept. Additionally, the general rule when it comes to ownership of copyright is that the creator of the work in question will own the copyright in the work.

The fact that Nike is the registered owner of the RF logo trademark and, in all likelihood, the copyright of the logo, means that in principle it could continue to commercially exploit it on clothing, sports equipment and the like, as it has done for so long, and that they can prevent Federer from doing so, despite the fact that the logo is comprised of his own initials and has become synonymous with him as a sporting personality.

A similar dispute came before the South African courts a few years ago after fashion designer Jenni Button sold her business, including the Jenni Button and associated JB Inc Trademarks, to Jenni Button (Pty) Ltd. Following the sale and a breakdown in negotiations around Button becoming a director of and owner of 30% of Jenni Button (Pty) Ltd, Button starting using 'Jenni Button' in relation to goods designed and manufactured by her under the trading style “philosophy”. Jenni Button (Pty) Ltd took issue with this and sought to restrain her from doing so on the basis that it was the owner of the 'Jenni Button' and associated trademarks.

Button, in her defense, sought to rely on the provisions of the Trade Marks Act which provide that a registered trademark is not infringed by the bona fide use by a person of his or her own name. In this case, Button’s defense was not successful because she had disposed of her rights in the name 'Jenni Button' as a trademark and that her use of the name could not be bona fide as she had willingly and knowingly sold the rights to the name.

So what will happen in Federer’s case? It’s early days in the aftermath of Federer’s divorce from Nike, but media reports suggest that the tennis superstar is unfazed at this stage and that he believes that he will prevail in this battle. In this case he may be right, as although Nike appears to hold most of the legal cards, fighting Federer on this issue could amount to PR suicide by them. Watch this space...