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News blog30 November 2022European Innovation Council and SMEs Executive Agency

FIFA World Cup Qatar 2022

World Cup

One of the largest sporting events of the world, the “FIFA World Cup”, organised by the Fédération Internationale de Football Association (FIFA), has started in November and is taking place in Qatar.

The FIFA World Cup is one of the most renowned international football tournaments and gathers millions of spectators in every edition. Many stakeholders are involved too, not only the organiser of the event itself, but also football clubs, sponsors, licensees of audio-visual rights or licensees of IPRs.

These stakeholders invest substantial amounts of money and resources to take part in this event, as it is undoubtedly a means of utmost importance for sponsors to boost their brands’ visibility and advertise their products, services and merchandising to a global audience. Their trade marks will be shown in the stadium, on billboards and on the equipment of football players and teams. In this sense, trade marks, designs and copyright are particularly involved in sports events. 

In this context, it is common to find brands or advertisers that seek to take advantage of the huge public interest in this event. But rather than investing money in it - like the official sponsors invest money in return for advertising space - they will just try to gain exposure without a financial investment. Generally speaking, they seek free advertising.

This unlawful practice is called “ambush marketing” and it consists either in creating a commercial association with the sports event, or seeking promotional exposure. 

“Ambush by association” occurs when a brand or an advertiser gives the impression that it is sponsoring the event or that it is associated with it, for example, by using a registered trade mark without authorisation of the right holder; the aim of the non-sponsor is to create the impression that its company/ brand is associated or somehow linked with the FIFA World Cup. 

Another form is known as “ambush by intrusion”, and it takes place when a brand introduces an advertisement into the event, for example inside the stadium or even around it, by gifting the public or the players with branded items (e.g., a cap) that will be then filmed by the cameras.  

Indeed, this opportunistic behaviour is very harmful to the real sponsors and to FIFA, the organiser of the event, as it can entail a devaluation of FIFA’s official sponsors and financial losses for them. For this reason, the FIFA guidelines consider ambush marketing as a prohibited marketing activity and a priority as regards their brand protection policy. 

From its side, FIFA protects its IP assets, such as the name of the sports event (FIFA World Cup), its official logo, the official emblem, the name and the appearance of the official mascot, or even the FIFA World Cup Trophy, and in a measured way, the intellectual property rights of their sponsors.  

Moreover, the organisation closely monitors its registered assets in order to prevent infringements of their trade marks on websites and on social media platforms. The Federation licenses the use of its logo to some companies, in order to produce clothing, footwear or other items, and therefore it must remain vigilant to ensure that these are not counterfeit products.  

Apart from the provisions included in the guidelines, the existing local laws and those explicitly developed for the tournament are applicable. In case of trade mark infringement, the existing Qatar trade mark law – i.e.,Law No. 9 of 2022, on Trademarks, commercial indications and industrial designs – would protect the exclusive right of the right holder. Furthermore, a specific law has been adopted for the event, tackling intellectual property and advertising, namely Law No. 10 of 2021 concerning measures for hosting the FIFA World Cup Qatar 2022 (Qatar World Cup Law).

 

Back to the practice of brands that seek to link themselves to this event, some months ago the Swiss Federal Supreme Court issued a decision concerning the registration of 2 trade marks. 

In 2018 and 2019 respectively, the German company Puma registered two trade marks before the Swiss Federal Institute of Intellectual Property, namely “PUMA WORLD CUP QATAR 2022” and “PUMA WORLD CUP 2022”. The goods covered by the application were in classes 18 (bags for sports), 25 (sportswear) and 28 (sporting articles) of the Nice Classification.

From its side, FIFA owned two earlier trade marks, registered in 2018: “WORLD CUP QATAR 2022” and “WORLD CUP 2022”. 

In 2019, FIFA filed a lawsuit before the Zurich Commercial Court, seeking for a cancellation of the trade marks “PUMA WORLD CUP QATAR 2022” and “PUMA WORLD CUP 2022”. FIFA claimed that Puma’s trade marks created a misleading impression on the public, as it seemed that Puma was pretending to be seen as an official sponsor of the FIFA World Cup. The request was not based on the two earlier trade marks owned by FIFA, but rather on article 2 of the Swiss Unfair Competition Act. 

Apart from requesting the Court to uphold its cancellation claim - and thus to remove both trade marks from the register -, FIFA asked the Court to issue an injunction in order to prevent Puma from using those signs in connection with the sporting goods covered by the contested trade marks. 

From its side, Puma alleged that the terms “World Cup 2022” and “Qatar 2022” were descriptive of the event (the Football World Cup) and lacked inherent distinctiveness, and therefore asked the Court to declare the cancellation of both of FIFA’s trade marks. 

The Court dismissed both parties’ claims, on the grounds that the evidences submitted by FIFA were not sufficient to prove the misleading impression on the public.  

With regard to “World Cup 2022” and “Qatar 2022”, the Court considered that the figurative elements conferred distinctiveness to both trade marks.

In the light of the first instance decision, both FIFA and Puma lodged appeals based on the same pleas, before the Swiss Federal Supreme Court. 

In its decision, the Swiss Federal Supreme Court found that as the terms “World Cup 2022” and “Qatar 2022” were included in the trade marks “PUMA WORLD CUP QATAR 2022” and “PUMA WORLD CUP 2022”, this may give the misleading impression that there was a link or association between the FIFA World Cup and Puma, and that the latter could be an official sponsor of the football tournament. 

With regard to FIFA’s signs “World Cup 2022” and “Qatar 2022”, the Court considered that they lacked inherent distinctiveness and that they were descriptive of the FIFA World Cup. Notwithstanding, as those signs were referring to the FIFA World Cup, they could not be used by non-sponsors to create the impression of association with FIFA. 

As a result, the Supreme Court upheld both parties’ cancellation requests and ordered to remove the 4 trade marks from the register. 

Regarding the injunction, the case was referred back to the first instance Court, to issue a judgment. The Zurich Commercial Court upheld FIFA’s injunction request and ruled that, in accordance with the Supreme Court’s decision, apart from having both trade marks cancelled, Puma could not use those signs in relation to sporting goods, since they can be misleading for the public.  

 

From the Swiss Supreme Court decision, it seems that it will be difficult to register, at least in Switzerland, a trade mark containing the name of an event, as it could be considered descriptive. However, the Court has also ruled that third parties cannot use the name of the event if they are not sponsoring it and if they are not authorised by FIFA, taking into account that this association would be misleading for the public.

We will see whether further developments occur – and that for the time being it seems that FIFA’s trade mark is successfully registered at EU level

 

Picture by Sandro Schuh on Unsplash

Details

Publication date
30 November 2022
Author
European Innovation Council and SMEs Executive Agency