Just a few months after launching his own brand, Tiger Woods faces a most unexpected scenario when he finds himself involved in a legal battle with a brand of fans. It is a circumstance that is no less significant because it is peculiar, since he is not the first sports star to see how what seemed like a great deal ends up turning into a headache.
In this case, the trigger for the conflict is simple to explain, although without removing from the matter a much more complex legal background that must be resolved in the US courts. It was last September when it was reported to the media that Tigeraire, a refrigeration products manufacturing company located in Louisiana, had filed a claim with the United States Patent and Trademark Office against Sun Day Red, the new clothing brand promoted by the Californian golfer.
What the plaintiffs claimed was that Sun Day Red had “illegally appropriated” their logo design, which also contains a leaping tiger. However, far from ending the conflict here, Woods’ legal team counterattacked with another lawsuit, in which Tigeraire was accused of wanting to benefit from the situation: “This case, unfortunately, occurs in the old and trite circumstance of a company opportunistic and misguided attempt to extract unjustified financial gain from a larger, more successful brand, based on threats of legal action and demands for exorbitant sums.”
María Dolores Garayalde (Partner, Intellectual Property) and Rubén Cano (Senior Associate, IPTech).
A complicated issue that must be worked on by professionals
To understand the keys to this process, the Baker McKenzie law firm, through María Dolores Garayalde (Partner, Intellectual Property) and Rubén Cano (Senior Associate, IPTech), shed more light on the matter in MARCA: “The question that arises Here and it will have to be examined whether that mark is likely to create confusion among consumers, regarding the business origin of the products that are marketed, so that there is a similarity that is likely to create confusion. A series of factors must come together: graphic, visual and conceptual similarity and also a coincidence from the point of view of the products that are marketed.
Here Sunday has applied for a trademark that applies to distinguish class 25 products, which are clothing. Tigeraire, for its part, is the owner of a priority registered trademark in class 11, which are different products such as fans or air conditioners, so there would be no clear coincidence in the scope of application. But in the USA, and this is a peculiarity of the American system, not only the registration of the trademark is taken into account, but also the use made of it in the market. Therefore, Tigeraire alleges that, without prejudice to having registered its trademark in class 11, in reality it has also made use of it in the market to sell textile clothing, in particular, t-shirts, caps, etc.”. The issue that will have to be clarified This is whether this use is incidental and for purely promotional purposes or really responds to the intention of selling textile products.
Therefore, in a case like this, it is worth asking where the limit is when it comes to similar logos. For the intellectual property experts we have consulted, “the limit is linked to the risk of confusion that the use of both brands may generate in the market”, since “if the existence of a risk of confusion is found , the registry will consider that both brands cannot coexist in the market”. At the moment, it seems that a convoluted legal process awaits Tiger Woods that will not be free of uncertainties: “In the USA, the opposition procedure is very complex and long. It is configured as a true litigation, with the evidentiary phase being an important part of the As for the duration, the main issue is that, as we have two parallel procedures, the registration of the trademark will be put on hold in the opposition managed before the United States Patent and Trademark Office until the US Patent and Trademark Office decides. California court on declaratory non-infringement action filed by Tiger Woods. This makes it difficult to know how long it may take, foreseeably more than two years unless the parties reach an agreement.
Likewise, the consequences for the 48-year-old golfer can also be unpredictable: “The effects will depend on the decision made by both the registry office and the California court. If Sun Day Red registers the trademark and there is no infringement, probably be able to exploit it with some freedom. If we are in another scenario, in which there is a rejection of the trademark or it is declared that there is infringement, Tigeraire could assess whether this entitles it to prevent Tiger Woods from using that trademark, or whether it can claim damages. for as long as it has used and where, because it seems that he has been using it for months. We are in the initial phase, so, right now, it is a little premature to know what the next steps will be. In these types of cases, it is not unusual to reach coexistence agreements. , in which the use that both companies can make of their respective brands is regulated so that no risk of confusion is generated in the market.
From the unusual case of Neymar to the mega-trial of Beckham
But Tiger Woods is not as isolated a case as it might seem. And in recent decades it has been common to see how stars create authentic empires around their personal brand, something that can sometimes be a double-edged sword. A well-known case in this sense was the one involving Neymar Júnior, after the Portuguese businessman Carlos Moreira registered the ‘Neymar’ trademark with the European Union Intellectual Property Office (EUIPO) in 2013, before the footballer could do the same, which is why their lawyers took the corresponding legal actions to obtain the rights to the brand.
Finally, it was not until 2019 when the Court of Justice of the European Union, based in Luxembourg, agreed with him by ruling that this person had acted “in bad faith” and knowing the growing popularity that the player already had. in Europe at that time. Moreira’s arguments were of little use in this case, who denied that said registration was for the purpose of “exploiting the renown of the Brazilian soccer player”, but rather that he did so “because of his phonetics” and ensuring that everything responded to a “mere coincidence.” due to their ignorance. The aforementioned court considered it proven that this person had “more than a limited knowledge of the world of football”, as was also evidenced by the fact that on the same day he requested the registration of ‘Neymar’ he also wanted to do the same with the word mark ‘ Iker Casillas’.
Curiously, what we can consider as a pioneer in terms of brand-athlete relations was not spared from being involved in this type of litigation. We are talking, of course, about Michael Jordan and his well-known brand, Air Jordan. In this case, the news broke last December, when Nike lawyers decided to sue Skiman LLC, a small ski clothing company, for using a logo similar to the famous ‘Jumpman’ so associated with the image of the mythical ‘Jumpman’. 23′ from the Chicago Bulls. Although the aforementioned company was able to register the logo with the United States Patent and Trademark Office without any problem, not even this was an impediment for the sports giant to take the matter to court.
Although cases like those mentioned may be obvious to anyone, the truth is that we have to think much more carefully when they are resolved at a legal level. Hence there may be people who profit by registering trademarks similar to those of well-known athletes. Our legal experts tell us the conditions that may exist in such cases: “Two circumstances can arise. You apply for registration and there is a trademark that is similar to yours, without bad faith. This can occur especially in the case of graphic marks in which prior reports are difficult to make. It is complex but it may be the case that there is a coincidence, and there may be two records that are similar at a given time. There is another scenario in which under the protection of. a well-known brand and With many followers, there are third parties who try to take advantage of the success of the renowned brand by registering logos that may resemble each other, seeking association from consumers to ensure greater sales, but they are slightly different situations. intention to profit. Therefore, we usually emphasize the importance of having an adequate brand protection and defense strategy to deal with this type of situation.”
As can be seen, the importance of being well legally advised is usually key in these cases. This happened, for example, in the case of David Beckham, who obtained a succulent compensation of 280 million euros after suing 150 fraudulent sellers who were marketing false versions of their products on the internet, belonging to the DB Ventures brand.
However, intellectual property specialists do not know of cases of athletes who have lost their fortune due to these types of circumstances: “There are surely cases in which, for example, the athlete’s reputation in the brand has not been adequately capitalized. The lack of an effective brand strategy can expose athletes to situations of exploitation by third parties. It doesn’t happen too much, but it can’t be ruled out that “poor management could ruin your career.”
