Good Save: UK IPO Blocks Passing Off AttemptSeptember 23, 2021

Earlier this year, a British businessman by the name of James Dear applied with the UK Intellectual Property Office (“IPO”) to register a mark consisting of the name “RONALDINHO,” a famous retired Brazilian soccer player, imprinted on a crest resembling that of legendary soccer club F.C. Barcelona. Dear also applied to register a mark consisting of the name “HENRY,” a famous retired French soccer player, imprinted on a crest resembling that of once-successful soccer club Arsenal F.C.


Despite not having the consent of either player, Dear claimed he was free to register such marks on the basis that the UK has no right of publicity or a right to protect a person’s image or likeness. The IPO disagreed, maintaining an objection and ultimately refusing both applications. On August 24th, the IPO issued the grounds for its decision.

While the issued decision acknowledged that the UK does not have a specific right of personality or publicity, it nevertheless concluded that the applications were filed in bad faith and were an attempt to “free ride” on the fame of the footballers. In the opinion, IPO Officer Linda Smith stated, “I am unable to accept Mr. Dear’s submissions that some form of legal presumption exists whereby anyone, including those without any commercial connection, is entitled to apply to register as a trade mark that famous name, or that it is, otherwise, a case of ‘first come first served’.” The opinion continued: “[W]ell known personalities are known to endorse products and I consider it more than likely that anyone seeing this mark on the goods applied for would expect ‘Ronaldinho’ [or ‘Henry’] to have endorsed or otherwise had some control over them, and in view of [their] fame, consumers would be encouraged to buy those goods.”

The IPO’s decision was based off the English common law action of “passing off.” Generally speaking, passing off occurs when a party misleads consumers into believing their goods or services were actually those of another party so as to benefit from that party’s reputation. As there is no federal statutory or case law for the right of publicity in the United States, many states follow this same approach, preventing a form of unfair competition where consumers are deceived as to the origin of the goods or services they are purchasing.

In states with a recognized right of publicity, the right typically prevents the unauthorized commercial use of an individual’s name, likeness, or other recognizable aspects of one’s persona. This gives an individual the exclusive right to license the use of their identity for commercial promotion. It has been enforced successfully by or on behalf of the likes of Johnny Carson, Clint Eastwood, Vanna White, Bette Midler, and the Three Stooges.

The IPO’s decision stands in support of such rights. As stated in the decision, “A trade mark registration held by someone completely unconnected to Ronaldinho [or Henry] himself would, in my opinion, not just free ride in relation to his reputation but potentially impede Ronaldinho’s [or Henry’s] legitimate use of his own name in the course of trade or, for example, potentially link him to goods which may be of a kind or quality, for example, in respect of which Ronaldinho [or Henry] himself would have no wish to be associated.” In other words, third parties freely using the name and likenesses of famous individuals without consent gives that third party an unfair advantage and unfairly harms the individual whose name or likeness is being misappropriated. As the IPO put it, such a situation “would be a serious risk of the mechanism of trade mark registration being brought into disrepute.” Accordingly, the IPO has taken the position that such use is improper.

The full decisions are available here and here.

Nicholas J. Krob is an Associate Attorney in the TrademarkLicensing, and Litigation Practice Groups at McKee, Voorhees & Sease. For additional information, please visit or contact Nicholas directly via email at

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