Bristows associate Sebastian Stewart has been featured in The Athletic (owned by the New York Times) discussing Chelsea and England footballer Cole Palmer’s recent successful registration to trade mark his nickname ‘Cold Palmer’ as a word mark. 

The article explores the commercial implications of the trade mark registration, which covers an extensive list of products ranging from energy drinks and stationery to clothing, toys, and alcoholic drinks (but excluding wine). It also examines the growing trend of sportspersons protecting their personal brands through registering intellectual property rights (since there is no clear legal protection for personal image rights under English law).

The article highlights that a standard Premier League player contract may not typically cover the assignment of registered intellectual property rights, such as trade marks (but only deals with assignment of image rights), to which Sebastian commented: 

“That’s a good sign that this is quite a novel and bold registration.” 

It goes on to discuss the potential licensing deal Palmer could capitalise on for the ‘COLD PALMER’ mark to allow it to be used by third parties, for example in video games like EA Sports FC. Sebastian explained: 

“It would depend on what is agreed commercially. That could be on a royalty basis. It would probably be very unlikely to get paid, for example, per game, but often you see it in the non-footballing world’s commercial licences, it could be paid on a per product sale, it could be paid on yearly revenues or it could just be a flat fee you pay every year or a flat fee at the start and you end up getting a licence for a set number of years. The agreement would set use restrictions, for example, making sure that the brand name isn’t used to damage his reputation and other protections like that, because obviously they’re going to want to protect the brand as much as possible.” 

Later in the piece, he added: 

“Players are becoming businesses, they’re branching out and having a huge commercial life outside of football. This is a really strong indicator of that and where the industry potentially could be going...” 

Click here to read the full article (free account or subscription required).  

You can read Sebastian’s earlier article here, and a similar article on licensing of image rights and commercial considerations here.