NZ Silver Fern center of trademark issue between City Kickboxing, UFC and Rugby team

Prior to Israel Adesanya’s return to the Octagon on March 6^th, a potential trademark issue is percolating between his gym, City Kickboxing and New Zealand Rugby over a silver fern logo on the City’s uniforms.

According to a report from ESPN, the UFC was contacted by New Zealand Rugby about the use of the silver fern insignia.  However, New Zealand Rugby claims that it had not raised the issue.

“We are supportive of all sports people representing New Zealand,” stated a spokesperson for the club to ESPN. 

The silver fern has been on the national jerseys of the New Zealand Ruby team since the late 1800s but was not registered with the New Zealand Trademark Office until 1986. 

There seems to be a misunderstanding about the issue as the UFC is pressing that City Kickboxing remove the logo from their uniforms while the rugby club indicated that it had not made such a request to Adesanya’s gym. 

City Kickboxing’s owner was defiant at a press conference with respect to the notion that he would have to remove the logo.  “Nobody owns that symbol.  Everybody who represents our country internationally earns the right.” 

Upon search of the Intellectual Property Office of New Zealand, the New Zealand Rugby Union, Incorporated owns an image of the Silver Fern for various uses.  However, the depiction of the fern is used in various ways by multiple companies.  There are several other companies that have the trademark of the mark, “Silver Fern.”  

Payout Perspective:

The interesting thing is that the UFC is requesting the removal whereas the owner of the mark is saying that they are fine with City Kickboxing using it.  This may take you down the road of weakening of the actual mark if enforcement of rights is not exercised.  Yet, the owner has the right to do what it wants with the mark meaning that they can let City Kickboxing use it.  If you are the UFC, you might be weary of potential Intellectual Property issues despite the fact that the owner claims they are fine with the use of the mark.  One might suggest that the UFC may cite its uniform policy during fight week in invoking the removal of the fern logo from the uniform.  We will see next week if this becomes a bigger issue.