What has happened?
- Cole Palmer has secured UK and EU trade mark registrations for his name, nickname, signature and celebration gesture, with his facial image application still pending at the EUIPO.
- While the registrations arguably have limited enforcement value in practice, registering such indicia is becoming more common to help facilitate licensing deals, as well as to deter opportunistic merchandising, and potentially to control AI-generated likenesses in the metaverse.
- Within five years, the registrations will become vulnerable to non-use cancellation for any of the goods and services Palmer has not commercialised, and it remains unclear whether the trade marks add much to what Palmer could already achieve under the law of passing off (false endorsement). However, in the absence of image rights law in the UK it is not difficult to see why celebrities and sportspeople are going down this route.
- We await case law on the extent of protection afforded by these sorts of registration eg the extent to which a registration for a face is infringed by the use of a different representation of the same person's face.
Want to know more?
Chelsea and England midfielder Cole Palmer has taken an unusual step for a 22-year-old footballer: he has filed trade mark applications covering not just his name and nickname, but his face, his signature, and even a video clip of his trade mark celebration. Other than his facial image application that remains pending before the EUIPO, most likely facing absolute grounds objections (or perhaps on hold pending the Grand Board of Appeal's decision on the registrability of another face mark), all of the trade marks have now been accepted by both the UKIPO and the EUIPO.
It raises an interesting question: are these registrations actually worth the paper they are printed on?
The practical reality: deterrence over enforcement
Palmer cannot stop broadcasters showing his face during match coverage, prevent newspapers printing photographs of him scoring goals, or sue fans who mimic his shivering celebration at their local five-a-side pitch. Trade mark law does not grant ownership of an image in every context, it grants exclusive commercial rights across specific goods and services.
The real value here lies more in deterrence and licensing, as opposed to enforcement. The registrations put third parties on notice that Palmer's name, face, signature and celebration are claimed as commercial assets. By securing trade mark registrations, Palmer avoids having to rely on more uncertain legal routes such as passing off (which requires proof of goodwill, misrepresentation and damage) or data protection laws (which were not designed for commercial brand/image protection and offer limited remedies).
However, it is questionable whether the trade mark registration actually adds much to Palmer's existing legal position. Under the law of passing off, Palmer could already prevent uses that amount to false endorsement, such as unauthorised merchandise suggesting his approval. Any trade mark registration for his face or celebration arguably does not expand this protection or not significantly, although trade mark actions are generally easier than passing off ones. He still could not prevent uses that do not suggest endorsement, such as an unofficial biography featuring his photograph.
For licensing deals, eg authorising a clothing brand to use his face on T-shirts, or permitting a video game developer to include his celebration animation, the existence of registered trade marks makes those agreements more robust in theory by providing an "asset" to licence.
The non-use vulnerability: a five-year ticking clock
Under both UK and EU trade mark law, a registration becomes vulnerable to cancellation for non-use if it has not been put to genuine use within five years of registration. Palmer's registrations cover a broad range of goods and services, including mouthwashes, incense, costume jewellery, vinegar, neon signs, toilet paper and yeast.
Five years from the registration date, any third party can apply to cancel the registration for those goods and services for which it has not been used on the ground of non-use. For Palmer, this means that unless he actively commercialises his name, face and celebration across a wide range of product categories within five years, his registrations will likely be reduced to cover only core categories like clothing, sporting goods and entertainment services.
The pending Grand Board of Appeal case
A significant legal uncertainty hangs over the registrability of facial image trade marks in the EU, with some having be accepted and some rejected. A case is currently pending before the EUIPO Grand Board of Appeal concerning the registrability of facial images as trade marks. If the Grand Board rules that facial images are inherently non-distinctive or fall foul of other absolute grounds for refusal, Palmer's pending EU face mark application could be refused.
The decision will not affect his UK registrations but it would undermine the EU dimension of his brand protection strategy.
Are they worth anything?
The practical value is likely to be concentrated in three areas: (1) licensing deals, where the registrations provide a clear legal basis for authorising use; (2) deterrence, where the existence of registrations discourages opportunistic merchandising; and (3) possibly, digital future-proofing, where the registrations may provide a basis for controlling AI-generated likenesses and metaverse avatars.
In time, with Registry and other disputes, we will receive a better understanding of the true value of these sorts of trade mark filings. Much will depend on Palmer's career trajectory, the outcome of the pending Grand Board of Appeal case and, critically, whether Palmer actually enforces and uses these marks.
