Jan 31,2019 / News / E-Bulletin

By Donvay Wegierski, Director

In August 2018, tennis champion Roger Federer terminated the sponsorship agreement with Nike having entered a US$300 million contract with Japanese casual wear, designer, manufacturer and clothing retailer Uniqlo.

On termination a dispute arose concerning Nike’s ownership of the trade mark rogerfederer, which Nike has registered as a trade mark in twenty five countries. As the mark comprises Roger Federer’s initials, Federer has requested that the trade mark be transferred to himself.

While the use of one’s personal name is recognised as a defence this is only so if consistent with ‘fair practice’ and in this instance the question concerns the terms of the commercial contract entered between Federer and Nike and where the goodwill in the trade marks and intellectual property resides now that it has terminated. The outcome of the dispute is not yet known but it does serve as a salient reminder to take the necessary steps to ensure that an owner files trade marks extensively and protects all intellectual property at the outset in order to ensure that the mark can form the basis of contracts commercialising such intellectual property.