WTO Intellectual Property
The first match in the 2010 FIFA* World Cup South AfricaTM is scheduled to kick off on June 11 next year but football fans are already caught up in World Cup fever. As are those planning to make a profit from the event. That is fine with FIFA, as long as they agree to play by the rules and pay licensing and sponsorship rights. FIFA is well prepared for ambush marketers who think they can take advantage of the sporting event without paying their dues.
The whistle has blown in the battle against these trademark infringers, and the game has begun. And FIFA is pleased to announce that the score is 1-0 in its favor. The first court case in South Africa has been successfully conducted - the result of meticulous planning and a well-formulated strategy.
FIFA's efforts to counteract the activities of ambush marketers began in 2004, when the awarding of the right to host the tournament in 2010 was first announced. FIFA set to work assessing its ability to thwart its opponents, in particular within the framework of South African law. It found the playing field favorable: South Africa's experience with previous world cup tournaments had led it to establish effective legislation to deal with ambush marketing. This meant that, provided an appropriate strategy and legal structure were put in place - and available legal resources properly harnessed - there was a good chance the FIFA team would carry the day.
FIFA's first step was to make the most of these advantageous conditions. It embarked on an extensive trademark registration program covering trademarks such as South Africa 2010TM, World Cup 2010TM and the like. Once the official emblem had been created, it too was widely registered as a trademark as well as a design. To supplement these measures application was made to the South African Minister for Trade and Industry to declare the principal trademarks associated with the event prohibited from unauthorized use under Section 15 of the Merchandise Marks Act.
But those measures were only secondary to the main thrust of FIFA's plan of attack: to apply the provisions of Section 15A of the Merchandise Marks Act, which empowers the Minister for Trade and Industry to designate major sporting events as so-called "protected events." This prevents ambush marketers from, for example, attempting to obtain special promotional benefit from the 2010 World Cup, or be associated with it, without becoming sponsors. In May 2006, the Minister for Trade and Industry declared the event to be a protected one.
FIFA's next step was to harmonize and synchronize the implementation of its game plan. This entailed preparing a template for legal action against ambush marketers. Causes of action and arguments were formulated, in particular, to devise a means for FIFA to pursue a civil claim against ambush marketers based on the provisions of Section 15A of the Merchandise Marks Act, which makes it a criminal offense to use event trademarks with the intent, and effect, of obtaining special promotional benefit from the publicity attached to the tournament without the authority of the event organizer. An unlawful competition argument was crafted based on the principle that, in breaching the provisions of the Act and entering into direct competition with FIFA's official sponsors, ambush marketers were guilty of unlawful conduct, tantamount to a criminal offense, causing damage to FIFA by prejudicing its relations with its sponsors.
In view of the large sponsorship fees paid by the tournament's official sponsors, it is vital that FIFA guarantee to them - and deliver - exclusivity of advertising exposure in their respective areas of business. Any damage to the relationship between FIFA and its sponsors by ambush marketers could seriously harm FIFA and jeopardize the staging of future football World Cup tournaments.
So, all was set for FIFA's legal strategy to be kicked into action. Eastwood Tavern, a restaurant located near Loftus Stadium in Pretoria, one of the match venues for the 2010 World Cup, provided the opportunity for a test case. Without FIFA's authorization, the restaurant added the words "World Cup 2010" to the main sign displaying its name. It also erected banners featuring the flags of a number of prominent football-playing countries accompanied by "2010" and the words "Twenty Ten South Africa." FIFA seized the opportunity to take a first stand.
The tavern ignored requests that they remove the infringing sign and banners, so FIFA launched an application in the Pretoria High Court claiming interdicts against Eastwood Tavern for trademark infringement of World Cup 2010TM, South Africa 2010TM and Twenty Ten South AfricaTM, passing off and unlawful competition. FIFA won this first round against ambush marketing when on April 7, 2009, the High Court of South Africa (North Gauteng) granted the relief sought on all charges.
The legal strategy developed and implemented over a period of five years proved successful a mere two months before the Confederations Cup Tournament, the dress rehearsal for the 2010 World Cup, and just over a year before the main tournament itself.
The implications of this first success and the benefits realized are significant. FIFA demonstrated the effectiveness of its strategy, that it has the will, the legal resources and the wherewithal to defend and enforce its rights and fulfill its commitment to tournament sponsors. Would-be ambush marketers would do well to take note.
* Fédération Internationale de Football Association
This article by Owen Dean, trademark attorney, Spoor & Fisher, South Africa, provides a glimpse at the amount of legal preparation that goes into protecting a big international event like the World Cup from trademark infringers who seek to free-ride on such events. Spoor & Fisher represent FIFA in South Africa.