On Your Marks, Get Set, Register!

With the famous Grand National race recently coming to an end, this year’s winner, I Am Maximus, has quickly become a household name. While the post-race fame can certainly offer great benefits for owners, jockeys, and trainers, it is important to go the extra furlong to protect the horse’s name and brand. Trade marks are an excellent way of protecting your brand and providing leverage in licensing and sponsorship negotiations. In fact, owners of famous racehorses have obtained trade mark registration in the UK on multiple occasions, such as Frankel.

In order to register a trade mark in the UK, applicants must satisfy a number of criteria set by the United Kingdom Intellectual Property Office (UKIPO). The initial stages of the UKIPO’s examination process mirror those set by the British Horseracing Authority (BHA) when assessing the registrability of a racehorse name. For example, the name must be unique and not contrary to public policy.

However, there are some differences between both systems. Firstly, the BHA operates on a ‘one-name-per-horse’ basis, meaning that multiple horses cannot share the same racing name. In contrast, the UKIPO will allow multiple trade mark applications for the same name. However, it will notify previous rightsholders of similar or identical applications, offering them a chance to oppose the application. While the BHA draws the line at the name being unique to the horse, the UKIPO follows a more complex set of rules. In particular, trade marks which are descriptive of the goods and services in the application are likely to receive an objection. For example, it would be difficult to register a trade mark for ‘RACING SADDLERY’ for goods and services relating to racing saddles, bridles, and other specialised racing tack. Finally, the BHA follows a strict 18-character or 7-syllable limit on racehorse names, whereas the UKIPO does not.

As seen with the likes of Arkle and Shergar, it is not uncommon for famous British racehorses to become the subject of movies, books, documentaries, and so forth. Trade marks are a very valuable business asset and with registered protection in place, rightsholders are armed with greater leverage when negotiating licensing, merchandising, sponsorship, or other entertainment deals, creating a lucrative new revenue stream. If you are interested in finding out more, please contact April Parker and Christine Danos.