Lawyer Says Case Demonstrates The Need To Register Trade Marks Early

A legal battle which looks to delay the launch of footballer Cristiano Ronaldo’s underwear brand into the US highlights the dangers of not registering trade marks quickly in all countries where commercial activity is likely, says a leading Intellectual Property lawyer.
               
Last year Ronaldo launched a range of men’s underwear and socks under his brand ‘CR7’ – a combination of his initials and shirt number.

Recently however he has encountered a problem in relation to the intended launch and sale of underwear and clothing in the US as there is already a trade mark registration for CR7 by Rhode Island citizen Christopher Renzi.

Mr Renzi applied for the mark ‘CR7’ back on 25 June 2008 for ‘fashion clothing, namely, jeans and t-shirts’. The mark is said to represent his initials and date of birth, being 7 October. 

JBS Textile Group, which is said to hold a world-wide licence to mark Ronaldo’s underwear, wrote to Mr Renzi in May this year objecting to his registration and use of the mark and stating that a petition to cancellation the registration had been filed with the USPTO.  They argue that Mr Renzi registered the mark specifically to benefit from Ronaldo’s increasing fame. 

Mr Renzi disagrees and has noted that at the time he adopted the CR7 mark Ronaldo wore the number 9 shirt. This is true to up to a point as during the 2009-10 season, when Raul was still occupying the number 7 shirt for Real Madrid, Ronaldo wore number 9. Apart from this one season, Ronaldo has always worn 7 since joining Manchester United in 2003.  Mr Renzi issued proceedings on 28 July 2014 seeking a declaratory judgment that he owns the trade mark CR7 and that his use does not infringe any trade mark owned or used by JBS/Ronaldo.

Mr Renzi has already scored an interim victory. Last week the USPTO suspended JBS Textile’s application to cancel Mr Renzi’s CR7 trade mark on the basis of Mr Renzi’s civil claim against Ronaldo which may have a bearing on the USPTO proceedings.  Mr Renzi has reportedly had difficulties serving legal papers on Ronaldo and  ‘has been unable to locate him’. Mr Renzi’s lawyer has reported that legal papers were delivered to Real Madrid to Mr Ronaldo but that they were refused acceptance on the basis they did not involve the Real Madrid team.

Georgie Collins, An Intellectual Property Partner at the London office of national law firm, Irwin Mitchell, said:

Expert Opinion

This case highlights not just the importance of securing trade mark registrations as soon as possible, but ensuring that applications are made in all jurisdictions of interest and where commercial activity is likely.

“Simply because a person or organisation has a registration in one jurisdiction does not mean it will enjoy reciprocal rights in another. The trade mark system operates on a ‘first to file’ basis. Interestingly Ronaldo applied for a European trade mark registration on 6 June 2008, just two weeks before Mr Renzi’s application in the US.”
Georgie Collins - Partner

Trade marks and footballers have a strong affinity in the world of brand and reputation management.  Examples of where other footballers have protected their rights include David Beckham, who owns various trade marks including ‘DB07’ DB23’ and BECKHAM. Gareth Bale also recently applied to register the representation of his goal celebration known as the ‘Eleven of Hearts’. Although this failed, it is indicative of the perceived power of a brand and the associated and endorsement and merchandising rights that follow it.