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Section 16. Science of law
Etlon Peppo,
Ph. D. Attorney-at-law & Assistant-professor in the Faculty of Law, University of Tirana E-mail: al.linkedin.com/in/etlon-peppo-37a2b313b; e-pepo@hotmail.com
WELL-KNOWN MARKS AND SPORTS IN VIEW OF THE WORLD INTELLECTUAL PROPERTY DAY 2019
Abstract. The World Intellectual Property Day represents an occasion to learn more and better demonstrate the importance of intellectual property rights in helping the economic development of a country and encouraging innovation and creativity. This day is celebrated every 26 April anywhere in the world through the participation and contribution of many IP offices, professionals, law offices, lawyers, professors and students. For that reason, this article aims to highlight the importance of IP rights in protecting the intellectual creations of humans, as well as the benefits and advantages that the registration of IP rights before the competent authority bring. As the World Intellectual Property Day 2019 has been chosen to be dedicated to the IP rights within the world of sport, the article will cover the main topics of the famous or well-known sport marks in the area of IP law. Such topics include very interesting information and commentaries as regards the famous sport marks in the world: the advantages of registration of a mark, the benefits of famous or well-known sport marks in ensuring a broad protection to their owners, the protection against the counterfeiting activity concerning the well-known sport marks, etc. IP rights and famous marks are closely related to each-other as the IP rights enable the protection of famous sport marks and guarantee the latter from the unfair trade and concurrence practices.
Keywords: IP rights, well-known/famous marks, trademark registration, sport marks.
Every 26 April, it is celebrated the World Intellectual We are aware that sports have become a multi-billion-dollar
Property Day to learn more and better understand the role industry, which involves more and more people, athletes, spon-of intellectual property (IP) rights in helping the economic sors, businesses, TVs and other communication media. Today, development of a country and encouraging innovation and thanks to the development of technology and Internet, anyone creativity. Such a date constitutes a great opportunity to get can follow different sport activities from any place in the world. people interested in matters of IP and broadly involves many In this manner, you may follow and watch your favorite athlete activities and people from different countries over the world. or team directly from the armchair ofyour house. The industry of In 2000, WIPO's member states designated April 26 - the sport is growing year-on-year and a greater number of people are day on which the WIPO Convention came into force in being involving, as well as many businesses are currently invest-1970 - as World IP Day with the aim of increasing general ing in development of sport or organization of sport activities. understanding of IP. Trademarks, designs, patents and copyright play all a
Faster, stronger, higher! The new slogan that is chosen great role in the global industry of sport by providing exclu-to celebrate the World Intellectual Property Day 2019 repre- sive rights to their owners and enabling them an appropriate sents the real values of sport's competition which often lead compensation for the exploitation of their intellectual works. athletes and ordinary people to achieve extraordinary success. In this commentary, the focus will be on famous trademarks This year, the focus of the World Intellectual Property Day will and their precious value for the athletes, sponsors, businesses be directed to the very beautiful world of sport and how do and organizers of sport events.
the IP rights protect the development of sport! But, how do If we would be required to tell a name of a famous mark
the IP rights encourage the development of sport and protect in the field of sport, everyone will certainly mention Adidas, the global industry of sport as well? Nike, Reebok, Puma, Espn, Nba, etc. But, why these marks
WELL-KNOWN MARKS AND SPORTS IN VIEW OF THE WORLD INTELLECTUAL PROPERTY DAY 2019
are considered to be famous marks in the world of sports and in general as well? What should we consider to be a famous mark? Famous marks or well-known marks is the term used for those registered or unregistered marks which have gained a very good reputation for their goods and/or services in the relevant sector of public. As a rule, a famous mark should fulfill some specific conditions in order to be considered as such:
1. The degree of knowledge or recognition of the mark in the relevant sector of the public; 2. The duration, extent and geographical area of any use of the mark;
3. The duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies;
4. The duration and geographical area of any registrations, and/or any applications for registration, of the mark, to the extent that they reflect use or recognition of the mark;
5. The record of successful enforcement of rights in the mark, in particular, the extent to which the mark was recognized as well known by competent authorities;
6. The value associated with the mark.
The above-mentioned conditions are almost adopted by all the countries in the world. Moreover, the majority of countries have fully adopted and implemented the said provision concerning the famous/well-known marks into their domestic legislation. As provided by the Paris Convention for the Protection of Industrial Property (1883), the countries of the Union undertake to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods.
The Paris Convention for the Protection of Industrial Property constitutes an important legal instrument regarding the protection of famous or well-known marks. In addition to the above, the protection provided by such a convention for the well-known marks is also extended for similar signs which are used for dissimilar goods or services. Under certain conditions such as: the earlier reputation of the well-known mark in a country, the use or registration of the subsequent mark or sign without a reasonable cause and the acquirement of unfair advantage or damage of the distinctive nature/good name of the well-known mark, the well-known mark is protected even for those cases when the subsequent mark or sign is used/ registered for dissimilar goods or services. Furthermore, the above-cited provisions shall be applied even in the cases when the essential part of the subsequent mark or sign constitutes a reproduction of any such well-known mark or an imitation liable to create confusion therewith.
Taking into account the provisions of the Paris Convention for the Protection of Industrial Property as a strong basis and international obligation for the protection ofwell-known marks, the WIPO adopted a specific document whereby the factors for consideration in determining a well-known character of a mark are provided. In this sense, we should underline the fact that the above-mentioned conditions are not pre-conditions for reaching the determination that a mark is well-known, but such conditions should be necessarily taken into account in order to define the well-known character of that mark. Under specific circumstances and in some cases, the above conditions should be all relevant. In other cases, only some of these conditions may be relevant.
As a conclusion, we may summarize that the famous or well-known marks enjoy in most countries protection against signs which are considered a reproduction, imitation or translation of that mark, independent of the fact that such a mark is registered or not. Further to the above-mentioned, as well as considering the above-cited conditions, many sport marks are considered to be well-known or famous in the whole world among both the relevant and general public. Sport marks represents valuable assets that can build trust and loyalty to a product.
As we already know, the main function of a mark is to identify the commercial origin of the concerned goods and/or services in order to enable to the relevant consumers to distinguish the goods and/or services of a mark from those belonging to a competitor or another subject. Nowadays, consumers represent a vital part of a brand as they always recognize and select the products or services of a particular business through the trademark. For instance, everyone is able to recognize the Adidas' s three stripes mark, Nike's symbol or Puma's panther.
But, which are the benefits and advantages of these famous sport marks? What does they represent for the relevant consumers and public? And why is it so important to create and register your own trademark?
Following the example of famous sport marks mentioned above (e.g., Adidas, Nike and Puma), we may conclude and realize that such marks constitute a guarantee for the quality of their products. Consumers are always certain about the quality and value of the goods bearing these famous marks when deciding to purchase such a kind of goods. In the other hand, the international and national legislation provides a broader protection to these famous marks against anyone who tries to use, reproduce or imitate them for dissimilar goods or services which are not related to the world of sports (please see above).
In other words, no one can use the Adidas's three stripes mark or Nike's symbol for goods such as: chemicals, pharmaceutical products, paints, industrial oils, legal services, medical services, etc. For this reason, the broad protection of famous marks constitutes one of the most important advantages of
these kind of marks in relation to other marks having a normal distinctive character.
Trademarks play a role of huge importance in commerce and increasing income of the companies, especially in the case of famous marks belonging to famous and notable companies. Sport events create an important audience and appeal among the relevant and general public. The number of people attending or following different sport events is continuously increasing. Nowadays, many people from different part of the world follow their favorite sport teams, athletes or events via telecommunication means, TV sport broadcasting programs or Internet.
A famous trademark has a strong distinctive character, and as a such, it enables to its owner to increase prices, revenue and royalty of consumers. It is commonly known that most of the people prefer and choose to purchase a product bearing the sign/mark of Adidas or Nike instead of purchasing the same identical product with the same model and color bearing another "unknown" sign, irrespective of material of the product.
In such a manner, trademarks in general, and famous trademarks in particular, give the possibility and opportunity to their owners to benefit from various sponsorships, merchandising and licensing agreements. Further to the above-mentioned, we may easily conclude that the trademark registration bears a huge importance for the owner as it enables him to directly benefit in various forms from its mark. For that reason, the original creation of the sign, as well as the strengthen of distinctive character of the mark and increase of the mark's value over time, bear a specific importance for the long way of becoming a famous mark.
In the world of sports, the benefits and advantages of famous sport marks are even more significant and bigger. For example, the most famous sport marks in the world sponsor and bear the costs for the organization of global and world sports events, such as: world cups, Olympic Games, world championships, national cups and championships, etc. The value and presence of these famous marks in these events constitute a guarantee for all the participants and general public.
At the same time, the marketing and investing policies of the owners of these marks have consequently increased the distinctive and well-known character of the mark, as well as the value and degree of recognition of the mark in the relevant sector of public and general public, which led these marks to become famous. Sponsoring and displaying trademarks in prominent places at sporting events help also to directly increase sales and link the company or products of the company to the sport event in particular, and world of sports in general.
Furthermore, the famous sport marks always sign mutual agreements with high financial values with sport teams and famous athletes/sport personalities in order to both benefit from the publicity and sales of various range ofsport articles which are
customized to that specific team or athlete. By following these policies, as well as based on the interest of people for sports, the well-known character of the mark has been further increased.
With respect to the organization of sport events and mutual agreements with sport teams and athletes, intellectual property rights create the legal framework to protect and ensure sponsors, businesses, athletes, organizers, manufactures and sport personalities from unauthorized use and infringement of their marks. The famous sport marks build a strong confidence among consumers regarding the authenticity and quality of goods. In the context of the authenticity of goods, it is very important for the owner of famous marks to register them before the WIPO or national IP offices.
Such an aspect is of a huge importance ifwe consider the fact that the most counterfeited products involve and affect the most famous marks in the world, and in particular, the famous sport marks due to their popularity. Under such circumstances, the owner of marks shall first nationally or internationally register their trademarks, and subsequently, it is strongly recommended to file a customs application before the customs authorities in order to let the latter seize the goods infringing the intellectual property rights. Based on this point of view, the registered trademark rights of the owner may be further protected and guaranteed in relation to various counterfeiting activities.
The registration of a trademark also provides a long-term protection and competitive benefits in the market. Businesses may protect their registered trademarks by having exclusive rights over the mark and preventing any third party to unauthorized use this mark. The ownership of a trademark also allows its owner to prevent the use of any sign which is confusingly similar with the registered mark. Thus, owning a trademark is an effective legal tool in combatting unfair competition and protecting the owner's investment.
A famous mark bearing a high distinctive character allows a business to build public goodwill and brand reputation in the goods and/or services it sells or provides. Trademarks are a part of everyday life that enables the consumers to decide whether to purchase the goods or services of a particular business instead of those produced or provided by another one.
In this sense, many sport teams and athletes have registered their names as a trademark in order to maximize their profits and revenues based on their fame and popularity. For that reason, they register and use their names as trademarks in order to indicate the commercial origin of the goods and identify them among the other similar sport goods. There is a number ofinfinitely examples as regards such a kind of trademark registrations, such as: CR7, Messi, Air Jordan, Los Angeles Galaxy, Chicago Bulls, NBA, etc.
Considering all the above-mentioned, and the increase popularity of sport, we can certainly say that the famous sport marks have now become a symbol of a lifestyle too!
