Protecting Sports Intellectual Property in Football Nets Many Benefits

Stephen Stolfi,

Saturday, May 29, 2021, sees the final match of the UEFA Champions League. Will you be supporting Chelsea or Manchester City? Regardless of which team comes out on top, the event will be enjoyed by millions of fans who have waited for their team to reach the pinnacle of the European club football game.

Football (soccer for our American readers) is one of the most popular sports in the world, and competitions such as the English Premier League, the UEFA Champions League, Major League Soccer in the United States, the FIFA World Cup, and the UEFA European Championships all contribute to its enduring popularity. The revenue of the European soccer market alone totaled some $28.9 billion in 2019.

Like most modern sports organizations, football clubs are cognizant of the value of their trademarks, associated intellectual property, and brand protection. In recent years though, perhaps the biggest area of change in how sports professionals have thought about IP has come in the area of player image rights. The star power and commercial appeal that some famous soccer players now command may rival that of many clubs. Not only do players now routinely negotiate over image rights and copyrights, but they are registering trademarks and have successful merchandise lines.

Soccer, like any professional sport, is dominated by trademarks that have been registered to protect teams or leagues. In some exceptional cases, however, a player themselves becomes a brand and therefore justifies name protection.

In this article, I examine the trademark portfolio of Lionel Messi and compare it to the portfolio of FC Barcelona, the club that he currently plays for. I also outline some of the challenges and benefits that protecting intellectual property brings to the sports industry today.

Lionel Messi’s trademark portfolio

A trademark search of the owner Lionel Messi reveals that he currently has over 80 registered trademarks in his trademark portfolio, spread over 17 registries (including the EUIPO and WIPO), with a further 13 marks pending registration at the time of writing.

Top registries

Upon further analysis of Messi’s registered marks (and taking into account his fan base as captain of the Argentinian national team), it is perhaps not surprising to see that the top registry by volume is Argentina’s INPI (51.1%), followed by Brazil’s INPI, and Malaysia’s MyIPO, which

both hold an 8% ratio share. His FC Barcelona fans are also accounted for as the EUIPO and Spain both also feature in the top ten registries — holding 6.8% and 4.5% of all registered marks respectively.

In terms of top owner countries, Spain holds 90.9% of all these registered marks.

Registered Trademarks Owned by Lionel Messi — Live Trademarks By Jurisdiction

Top product descriptions

It is interesting to note that of the top ten product descriptions, seven are found in Nice Class 16 (Paper Goods and Printed Matter), with “Headwear” found in Nice Classes 25 (Clothing) taking the top spot with a ratio share of 29.5%, followed by Nice Class 16 (Paper and Printed Materials) “ Bookbinding materials”, “Photographs”, and “Cardboard boxes” all holding a 15.9% share. I also see “Magnets” In Nice Class 9 (Electrical and Scientific Devices) featuring in Messi’s top ten.

Top classes

The wide scope of his merchandise and trademark coverage can be seen when examining Nice Class analysis of his portfolio which includes multiple Nice Classes — with the majority of filings found in Nice Class 25 (Clothing).

Registered Trademarks Owned by Lionel Messi — Nice Class Analysis

FC Barcelona’s trademark portfolio

The brand value of the top soccer clubs worldwide is impressive and FC Barcelona is no exception. According to Statistica’s ranking, Real Madrid CF topped the brand value list with a brand value of $1,572 million, followed closely by FC Barcelona, which had a brand value of $1,565 million in 2020.

Trademark owner Futbol Club Barcelona holds over 700 registered trademarks at the time of writing, spread over 51 registries including the EUIPO and WIPO, with a further 101 marks pending.

Top registries

Upon further analysis of this owner’s registered marks, the top registry is Spain’s OEPM (21.8%), followed by Mexico’s IMPO (7.2%), and Brazil’s INPI (6.9%). When it comes to top owner countries, naturally Spain holds the lion’s share with 90.3% of all these registered marks.

Top product descriptions

Six of the top ten product descriptions are found in Nice Class 41 (Education and Entertainment), with “Education, entertainment, and sports” topping the list with a 33% ratio share. “Footwear” and “Headwear” in Nice Classes 25 (Clothing), “Toys, games, playthings and novelties” in Class 28 (Toys and Sporting Goods), and “Stationery and educational supplies” in Class 16 (Paper Goods and Printed Matter) also feature in the top ten.

When examining trending products, the club has apparently focused its recent attention on Portable Computers in Class 9 (Electrical and Scientific Devices), with a 550% surge in volumes of registered marks from 2015 to 2021.

Registered Trademarks Owned by FC Barcelona — Trending Products

Top classes

The wide scope of trademark coverage can be seen when examining Nice Class analysis of its portfolio, which includes multiple Nice Classes — with the majority of filings found in Nice Class 41 (Education and Entertainment).

Registered Trademarks Owned by FC Barcelona — Nice Class Analysis

The benefits of trademark protection in the soccer industry

Although many look back nostalgically to the ‘good old days’, trademarks and the commercialization of intellectual property have allowed modern clubs to generate greater financial resources with which to invest in new talent, new facilities, and community or charity initiatives.

Establishing a strong brand, like those of champion soccer teams and players, has become a central element in the success of organizations as they seek to ensure good connections with licensees, fans, and valued business partners such as commercial sponsors. However, sports trademarks are also subject to infringement and abuse, and the ongoing protection and policing of sports brands in today’s global marketplaces can be challenging but necessary.

Protecting the valuable intellectual property of sports brands online is a critical business for trademark professionals and business owners, and one which Corsearch has great experience in.

Learn more about how Corsearch’s suite of online and offline brand protection solutions can help you to tackle infringement today!

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DISCLAIMERS

*The above trademarks and logos are not affiliated with or owned by TrademarkNow, a Corsearch company, and are used for illustrative purposes only as public record from the respective Trademark Offices.

** The above-mentioned brands are noted for factual reporting purposes only, the listing of the brands does not imply any relationship with Corsearch or its related entities.

By Stephen Stolfi
Stephen Stolfi a member of the Corsearch Executive Leadership Team. He has been with Corsearch for over 20 years and has worked in the brand clearance and protection solutions industry for close to 30 years. Throughout his career, Stephen has guided and trained numerous individuals at corporations and law firms on effective trademark search and brand protection strategies. He has also guest lectured on trademark clearance and protection at various colleges and universities throughout the U.S., as well as at local and global intellectual property associations. He has written a number of articles and has been quoted about brands in various industry publications and industry blogs. Stephen is Corsearch's Chief Commercial Officer.