Protecting a new protective cricket helmet: an IP case study

The world of cricket was shocked last year when Australian cricketer Phillip Hughes died after a “bouncer” delivery hit him on the back of his head during a match in Sydney, Australia.¹

In an attempt to prevent a repeat of this tragic accident, British Company, Masuri Group Ltd (“Masuri”),² has worked closely with international cricket bodies and invested over 240 hours in developing an improvement to their cricket helmet. The result is the “StemGuard”, a high strength clip-on piece that can be attached to the back of an existing Masuri Vision Series helmet (see pictures above).³

The StemGuard features a “honeycomb” of plastic and high-strength foam designed to reduce the impact of high-speed deliveries at the neck area. The design of the StemGuard has two key aspects: protection for the vulnerable area at the back of the head whilst retaining free manoeuvrability for the batsman.⁴

As with all new products and innovative technology, this interesting new development raises questions about how IP rights‎ may be used to protect Masuri's investment.

Trade Marks

Before revealing the new StemGuard branded helmet in February 2015, Masuri applied for a UK trade mark for the STEMGUARD mark. This application covers a range of goods in class 9 (including protective helmets, protective face shields for protective helmets), class 25 (including headgear) and class 28 (including protective padded articles for use in playing the game of cricket).⁵ This application is currently pending before the UKIPO⁶ who will determine if it fulfils the criteria for registration and provide a statutory period for others to challenge the application (e.g. those that have an earlier conflicting mark). The Masuri logo is already registered in the UK for sporting helmets in class 9.

If the mark proceeds to registration, Masuri will have the exclusive use of the STEMGUARD mark in the UK in relation to the goods and services for which it is registered. A UK trade mark is renewable every 10 years. One of the primary benefits of this would be that Masuri will then be able to stop others using and registering without authorisation any identical or similar mark for identical or similar goods in the UK. This would help them to stop the sale of counterfeit StemGuard helmets in the UK, which may not have been manufactured or tested to the same safety standards, a key aspect of this type of product.

Given the likely global sales of the StemGuard helmet, Masuri may wish to consider international trade mark protection. This could be achieved using a Community Trade Mark, which would cover all 28 countries of the EU in one registration. However, because cricket mad countries such as Australia, New Zealand and India are not in the EU, there is a possibility of obtaining cost-effective protection in these countries through an International Registration. Sri Lanka and South Africa are not, however, members of International Registration systems so individual trade mark applications in these countries would be necessary.