It is almost 20 years since the British financial institution Nationwide Building Society obtained a trade mark registration for the gesture “made by a person by tapping one side of his/her nose with an extended finger, normally the index finger of the hand on the side of the nose being tapped” (see http://www.ipo.gov.uk/tmcase/Results/1/UK00002012603). It seems an ingenious message given by the trade mark to a financial institution’s clients: The smell of a good business opportunity!
The above trade mark registration certainly did not start a trend in the financial sector, but Nationwide’s initiative seems many years later being followed by an unlikely successor: sports celebrities.
Australian tennis player Lleyton Hewitt obtained several trade mark registrations for the graphic representation of a gesture he became known for when scoring a point accompanied by shouting “C’mon” in Australia (for example, trade mark numbers 1212274 and 1212276), but not for gesture trade marks per se.
He was followed by the New York Jets quarterback Tim Tebow who made famous the gesture consisting on what his fans call “Tebowing”, which is dropping to one knee with a fist to your forehead as if praying. As was the case with Hewitt, Tebow does not seem to have tried to protect his gesture as a non-traditional trade mark, but he did obtain trade mark registrations for the word mark “Tebowing” in several international classes at the USPTO.
Following this trend, famous football player Gareth Bale protected his goal celebration and this time it was actually a gesture trade mark. The registration, which was obtained at the UK’s Intellectual Property Office (see http://www.ipo.gov.uk/tmcase/Results/1/UK00002657917), consists in a heart-shaped hand gesture that he uses after scoring a goal and has his shirt number 11 at the centre of the gesture. This gesture is known as the “Eleven of Hearts”.
The purpose of a sports celebrity registering his signature move is generally to exploit merchandising opportunities and this is reflected by Bale’s trade mark registration, which broadly covers jewellery, leather goods and clothing.
Football being as popular as it is, an important match can be viewed by hundreds of thousands, if not millions, of individuals on TV. Seizing the opportunity to position a trade mark by way of celebrating a goal seems a smart way to obtain a commercial benefit without the cost of paid advertising. Or does it? Bale’s UK trade mark registration is reported as “surrendered”: maybe, at the end of the day, he did not smell a good business opportunity after all.
Sasha Mandakovic Falconi is a lawyer with Falconi Puig Abogados and a member of the IP Outer Borders Team