A Brief Line-Up Of Rugby Trademarks

Olli-Joonas Juuso,

Saturday, 2 November sees the final match of the Rugby World Cup 2019. Regardless of who makes it to the end game, thousands of fans around the world have enjoyed a spectacular event, hosted brilliantly by Japan.

Rugby’s origins date back to the ancient world. Greeks and Romans played ball sports using their feet, and the Roman game harpastum is believed to have been adapted from a Greek team game known as "ἐπίσκυρος" (Episkyros) or "φαινίνδα" (phaininda) which is mentioned by Greek playwright, Antiphanes (388–311 BC), and later referred to by the Christian theologian, Clement of Alexandria (c.150-c.215 AD). Harpastum is a word derived from the Greek word “seize” and thus implies that somebody carried or handled the ball.

Legend has it that the modern game began at Rugby School in England when William Webb Ellis picked up the ball and ran with it during a football match. Evidence for this is sketchy; however, in British public schools, boys began to play a game consisting of running with a ball in their hands. But all schools had different rules. In 1863, the Football Association was formed, standardizing the rules of the game. Using hands was banned, so rugby carried on as a separate sport. In 1871, the Rugby Football Union (RFU) was formed. By this time the game had spread across Britain and the colonies.

Like any great sport, international Rugby teams benefit from many trademarks, and Rugby World Cup Limited, which owns and operates the Rugby World Cup, has over 230 trademarks.

Rugby World Cup trademarks – alive and kicking

The first Rugby World Cup trademark was registered in 1986. But Rugby World Cup Limited has many other marks registered to protect the event held every four years in different nations.  For example, the Rugby World Cup 2019 has been protected worldwide (across 13 trademark registries). The official website states:

“Any use of the Rugby World Cup 2019 Event Mark and/or trophy image for any commercial purposes is explicitly reserved for RWC Ltd and its commercial partners and licensees. No entities (other than those authorized by RWC Ltd) are permitted to use the Rugby World Cup 2019 Event Marks or trophy image for any commercial purposes including on, or in relation to, the sale, advertisement or promotion of, any goods or services.” 

The champion teams and their marks

In 1995, Rugby Union bowed to the inevitable and went professional. Brands like the Springboks and the mighty All Blacks have become household names.

S A Rugby (South Africa) has over 600 live trademarks in 10 jurisdictions. Most (46%) are registered across a range of classes; however, 14% are covered by Class 25 (Clothing), and 12% are Class 41 marks, which covers education and entertainment.  

The New Zealand Rugby Football Union (NZRFU) has over 400 live trademarks. Class 25 (Clothing) holds 25% of these and 20% are filed under Class 41 (Education and Entertainment). The top years for filing were 2002-2003. And of course, the NZRFU owns the trademark, All Blacks.  

In 2015, the New Zealand Herald reported that intellectual property lawyers in New Zealand feared that trademarks governing the use of All Black legend, Jonah Lomu's name had lapsed because of unpaid fees in New Zealand and the United States, leaving the way open for brand squatters. Jonah Lomu, who is widely regarded as the world’s greatest rugby player, sadly died that year with little money.

Is the Haka trademarked?

Many people associate the haka Ka Mate, a traditional Maori dance, often performed as a challenge, with the All Blacks, and even rugby itself. The composer of the haka Ka Mate was the famous Māori warrior chief Te Rauparaha, of the Ngāti Toa Rangatira tribe, who brought a case (Te Runanga O Toa Rangatira Incorporated v Prokiwi International Limited [2012] NZIPOTM 14) applying to trademark four important phrases from the haka:

  • KA MATE: Will it be death?

  • UPANE KAUPANE: Up one step, then up another.

  • WHITI TE RA: Into the sun.

  • KA ORA: Will it be life?

The trademark application was rejected on the ground that the phrases had no distinctive character for the purposes of the Trademark Act 2002.

Trademarks lead to growth of rugby 

Rugby, like any professional sport, is dominated by trademarks to protect the commercial products related to certain teams. In some cases, like that of Jonah Lomu, a player themselves becomes a brand and therefore justifies name protection. Although many look back nostalgically at the ‘good ole days’ before professionalism, the fact is trademarks have allowed clubs to access greater financial resources, providing a greater ability to invest in new talent and improve the sport.

Brand protection can be a trying matter

Establishing a strong brand, like those of champion rugby teams and players, is central to the attractability of a business and can lead to increased revenue from valued business partners such as commercial sponsors. However, the on-going protection and policing of that brand is equally as important.

Learn more about brand protection in the world of sports

Competition around branding is every bit as fierce in the world of sports as it is on the pitch. Millions of passionate fans around the world support a huge variety of sports, teams and players. Protecting the valuable intellectual property of sports brands is a critical business for trademark professionals and business owners. 

Tune into our “Branding in the World of Sports” webinar, led by IP Attorneys-at-Law Luka Jelčić at ZMP IP and Philipp Strommer at Grünecker and get insights into how you can navigate the key challenges of trademark management in the sports industry and keep your brands safe.

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