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This article was published in Manupatra Intellectual Property Reports on May 2011
Kavitha K[*], Filma V[**], Edited by Dr. Sudhir Ravindran[***]
“It cannot be stolen by thieves, nor can it be taken away by kings.
It cannot be divided among brothers; it does not cause a load on your shoulders.
If spent, it indeed always keeps growing.
The wealth of knowledge is the most superior wealth of all!”[1]
In this 21st century if someone takes initiative to make new version of this Vidya sloka, he/she would probably seek Intellectual Property (IP) protection for this sloka. It reflects the transformation that has taken place over the last few decades with regard to IP protection. Nowadays people are aware that knowledge also can be stolen very easily. Commercialization plays a significant role in most of the creations and that paves way for infringement of anything and everything. The main aim of the IP is predominantly recognized in the commercial world to protect the interest of the mercantile community.[2]
IP rights are usually associated with industry, typically the manufacturing industry. Now IPRs such as copyrights, trademarks and designs has become a source of significant value even to sporting events. With the growth of commercialization of sports, clubs and associations need to understand the basic concepts of IP so that they can effectively develop, protect and exploit their assets.
Human beings have been involved in sports activities since times immemorial. From the initial days of human civilization till date, sports have evolved from a source of personal entertainment to a global industry encompassing more than 3% of world trade. In the UK, sports provide employment to more than 420,000 people. It is one of the main revenue generating industries of the world and with the propagation of the internet and other forms of media, the sports industry is growing at a faster tempo.[3] Sports activities which started as a hobby or a pastime event to enable participants to enjoy the sports or as a form of physical exercise; have evolved into giant international events, or more appropriately international businesses. For e.g. Manchester United which is an English professional football club, based in Old Trafford, Greater Manchester and part of English Premier League, is one of the wealthiest and most widely supported football teams in the world. Manchester United has a wide range of commercial incomes, from sponsorship to merchandising and financial services. It operates a TV channel, radio station, publishes a magazine, provides newsletters and another large chunk of its revenues come from tickets to games, hotel and cinema.[4]
Popular games such as football, golf, tennis, basketball, cricket, yachting, car-racing, etc have evolved into international events with a huge following, creating gigantic marketing potential for the organizers. The organizers of popular games such as FIFA (football), PGA (golf), NBA (basketball), etc organize and manage the events, typically international competitions in such a manner to extract maximum value from others who want to exploit the marketing potential the events offer.[5] Sporting events have an impact on the economy of the countries holding the event as all industries manufacturing, tourism, broadcasting, advertising, etc directly benefit from it.
Cricket is synonymous to sports in India. This game draws the biggest attention and highest amount of revenue than all the other form of sports taken together in India. Cricket is changing and in many ways Indians are shaping the change & along with this, the need for IP protection in sporting events is gaining more importance.
The forms of Intellectual Property that routinely intersects sports events are the following:
A trademark can be a word, phrase, letter, number, sound, smell, shape, logo, picture that is used to distinguish the goods and services of one organization from those of another.
Assets such as a sport’s name (IPL), teams (Chennai Super kings) and events (Asia Cup) and their logos, colours and emblems hold commercial value and are essential components of branding and merchandising programs.
Copyright exists in an ‘original literary work’ and happens automatically when the work is created. The creator owns the copyright, unless commissioned by another, until they assign or license their rights to another individual or company.[6]
Copyright might be used to protect:
Registration of a design gives the owner protection for the visual appearance of the product, not how it works. To be registrable, a design must be new or original. Examples: merchandise, bicycles, football boots or cricket bats. [7]
This article focuses on effective trademark protection for sporting events.
Trademark registration plays a major role in sporting events to expand the market and gain greater name recognition. The organizers initially create a distinctive logo, emblem or phrase(s) to identify the event. If the logos or emblems are original, they would be protected as trademarks and copyrighted works. As an example, the emblem of the 2010 FIFA World Cup is protected as a trademark and as an artistic work under Copyright laws. Terms such as “2010 FIFA World Cup South Africa”, “2010 FIFA World Cup”, “2010 World Cup”, “Football World Cup” and similar derivations thereof are also protected against unauthorized use and subject to applicable laws in the various jurisdictions.[8] The objective is to protect IP, make a profit and increase brand valuation.
As the logo/emblem/phrases (“event identifiers”) are extensively in the media, they are easily and very quickly associated with the event by the public and thereby acquire a strong trademark value.[9]
A registered trademark gives its owner the exclusive right to use, license or sell it for the goods and services for which it is registered. Only a registered trademark can enjoy/avail the benefit of suing the unauthorized use of trademark for infringement. Registration of a trademark forbids every other person to use or obtain the registration of the same trademark or a confusingly similar trademark in relation to the same goods or services in relation to which the trademark is registered.
It is a fundamental principle of trademark law that the use of a trademark should be in relation to the goods / services carried under it.[10]
Manchester United has applied for the trademarks “MANCHESTER UNITED” (word),
(logo),
and (logo) to merchandise and manufacture numerous products. The following are classes for which theses marks have been protected.[11]
| Class | Goods/Services |
|---|---|
| 03 | Bleaching preparations and other substances for laundry use; cleaning; polishing; scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions, dentifrices |
| 06 | Badges (for vehicles) and bars for use therewith; keys; key blanks; key rings and key chains; locks and ornaments all made of common metals and their alloys |
| 08 | Manicure sets; cutlery; razors and razor blades; shaving cases; hand tools and implements; penknives |
| 09 | Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire extinguishing apparatus |
| 11 | Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying ventilating, water supply and sanitary purposes |
| 12 | Motor land vehicles and parts and fittings thereof; bicycles; tricycles; boats; parts, fittings and accessories for all the aforesaid goods. |
| 14 | Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and other chronometric instruments |
| 16 | Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); playing cards; printers’ type; printing blocks |
| 18 | Rubber, gutta percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal |
| 20 | Furniture, mirrors, picture frames; goods of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother- of-pearl, meerschaum and substitutes for all these materials, or of plastics |
| 21 | Household or kitchen utensils and containers(not of precious metal or coated therewith); combs and sponges; brushes(except paints brushes); brush making materials; articles for cleaning purposes; steel wool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware |
| 22 | Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes) padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials |
| 24 | Textiles and textile goods, not included in other classes; bed and table covers |
| 25 | Clothing, footwear, headgear |
| 26 | Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers |
| 27 | Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings(non-textile) |
| 28 | Games and playthings, gymnastic and sporting articles not included in other classes; decorations for Christmas trees |
| 29 | Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats |
| 30 | Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces, (condiments); spices; ice |
| 33 | Alcoholic beverages (except beers) |
| 35 | Advertising; business management; business administration; office functions; advertising via the Internet; provision of advertising space; provision of space on web sites for advertising goods and services; organization, arrangement and conducting of exhibitions, events and conferences for commercial or advertising purposes |
| 36 | Insurance; financial affairs; monetary affairs; real estate affairs; provision of financial services; credit card services; charitable fund raising services; financial sponsorship services; information, advisory and consultancy services relating to the aforesaid services |
| 38 | Broadcasting; broadcasting and transmission of radio and television programmes; data transmission and data broadcasting; cellular telephone communication services; cable, satellite and terrestrial broadcasting services; communications by fiber optic networks |
| 41 | Football coaching, football schools and schooling; education and training in relation to football; provision of football instructional courses; sporting management services for footballers; football entertainment services; fitness training services; publication of books and texts; rental of sporting equipment; health club services; provision of information relating to football; entertainment services; information, advisory and consultancy services relating to the aforesaid services |
| 43 | Services for providing food and drink; temporary accommodation |
In recent years, with increased competition, organizers and authorities have become more aware of the value of their rights and commercial value, and hence started merchandising on a larger scale worldwide.
For a country where the game of cricket enjoys maximum patronage, the field of branding and exploitation of branding is likely to throw up existing opportunities and at the same time call for a high degree of vigilance on the part of the clubs and associations.[12] The popularity of Indian Premier League (IPL), which has opened up numerous business opportunities, has caused brand managers to take notice of the importance of protecting their IP and seek trademarks for both existing products such as team apparel and those still in the realm of imagination.[13]
One of the most popular topics among the Indians is Indian Premier League. The IPL follows a similar pattern from the EPL (English premier league) in football. It is a perfect blend of cricket & entertainment. It’s providing a stage for many youngsters to show their performance & profitable too to Advertisers and broadcasting channels.[14] IPL followed the commercial and popular T20 format of the game where the teams play 20 over each. It is currently contested by 10 teams consisting of players from around the world.
| Franchise | City | Logo |
|---|---|---|
| Mumbai Indians | Mumbai |  |
| Royal Challengers | Bangalore |  |
| Deccan Chargers | Hyderabad |  |
| Chennai Super Kings | Chennai |  |
| Delhi Daredevils | New Delhi |  |
| Kings XI Punjab | Chandigarh |  |
| Kolkata Knight Riders | Kolkata |  |
| Rajasthan Royals | Jaipur |  |
| Pune Warriors India | Pune |  |
| Kochi Tuskers | Kerala |  |
The concept about IPR in Sporting events has changed dramatically over the last few years and the result is organizers of event such as ICC Cricket world cup (by BCCI) and most of the IPL owners also started taking ample care by monitoring some of the avenues such as protection of intellectual property rights, counterfeit merchandise and online piracy by forming 100 strong anti-infringement team to track those, using directly or deceptively the name, logo and mascot of the event.[15]
The official names, phrases, trademarks, trade names, logos and designs related to the Indian Premier League are protected by the law in a variety of ways.
The following are some of the current items that make up the IPL Names and IPL Marks:
| Proprietor | Logo | Word | Class |
|---|---|---|---|
| INDIAWIN SPORTS PVT. LTD. (Mumbai Indians) | √ | √ | 3, 6, 9, 11, 14, 15, 16, 18, 20, 21, 22, 24, 25, 26, 28, 29, 31, 32, 38, 41 |
| ROYAL CHALLENGERS SPORTS PVT. LTD. (Royal Challengers) | √ | √ | 16, 25, 28, 41, 42, 43 |
| M/S DECCAN CHRONICLE HOLDINGS LTD. (Deccan Chargers) | √ | √ | 25, 28, 29, 30, 32, 33, 34 |
| THE INDIA CEMENTS LTD. (Chennai Super Kings) | √ | √ | 19, 25, 28, 35, 37, 38, 39, 41, 42 |
| GMR SPORTS PVT. LTD. (Delhi Daredevils) | √ | √ | 16, 18, 25, 28, 35, 39, 41, 42 |
| Mr. VIKAS JAIN (Kings XI Punjab) | × | √ | 16, 25, 28, 41 |
| KNIGHT RIDER SPORTS PVT. LTD. (Kolkata Knight Riders) | √ | × | 16, 20, 21, 23, 24, 25, 28, 35, 36, 38, 42 |
| JAIPUR IPL CRICKET PVT. LTD. (Rajasthan Royals) | √ | √ | 6, 14, 16, 18, 25, 28, 32, 41 |
| SAHARA ADVENTURE SPORTS LTD. (Pune Warriors India) | √ | √ | 25, 28, 35, 41, 43 |
| KOCHI CRICKET PRIVATE LIMITED (Kochi Tuskers Kerala) | N/A | N/A | Data not available |
Among all the teams, Mumbai Indians has filed for trademark protection in multiple classes aiming for an expanded brand portfolio. Mumbai Indians and Kolkata Knight Riders have applied for trademarks to merchandise and manufacture numerous products. Interestingly, the trademark rights are not only limited to the sports-related classes but they are also seeking exclusivity of the brand under many other classes. Besides obvious trademark classes for clothing, footwear and sporting articles, Mumbai Indians and Deccan Chargers have filed applications for consumable products such as meat, tobacco products, tea and coffee, mineral and aerated water. It would be interesting to see how proof of use to sustain registration would be provided.
In order to extent optimum value trademark protection can be sought for other elements besides the word mark and the logo. The teams have a stylized logo that is used in conjunction with the team name on all their products and services, and this logo along with the name of the team and the team slogans should be sought to be registered, as very often it is on the basis of tag-lines or slogans that reputation is sought to be hijacked. Conversely most of the teams have gone for protection for both word mark and the logo except Kings XI Punjab which has filed only for word and Kolkata Knight Riders only for logo.
Considering the significance of IP protection for sporting events, it is good to note that the franchise owners have taken the first steps towards IP protection. In view of the huge amount spent on branding and corporatization of the teams, the sports franchise owners have to take adequate care to ensure comprehensive protection for the trademark portfolio and its effective management.
*Intern with Altacit Global and Graduate in Law from Government Law College, Thrissur, Kerala
**Trade Mark Department – Head with Altacit Global, e-mail: trademark@altacit.com
***Solicitor-England and Wales, Patent and Trade mark Agent and Attorney with Altacit Global e-mail:ravindran@altacit.com
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