why it's not a good idea

Rob Hawley, trademark attorney and sports IP specialist at Mathys & Squire LLP discusses brand association with the upcoming World Cup in South Africa and the ‘aggressive stance’ taken by governing body FIFA with FIFA 14 Coins.

With football fever rising as the World Cup gets ever closer, marketing campaigns taking advantage of SOUTH AFRICA 2010™ are already finding their way onto our high streets. However, agencies need to proceed with caution as WORLD CUP 2010™ brand owner FIFA is justifiably robust in defence of its trade mark rights and associated intellectual property rights.

Official World Cup partner brands and sponsors pay millions to be associated with the FIFA WORLD CUP™, and only do this in order to be guaranteed exclusive rights to use FIFA’s official marks on their marketing and promotional material. So it’s little wonder that FIFA defends its trade marks so vigorously when so much revenue is at stake.

Two recent cases in South Africa illustrate the aggressive stance FIFA takes with anyone who infringes its rights.

Johannesburg-based FMCG firm Metcash fell foul of FIFA when it released a confectionery line under the title “Astor 2010 Pops” alongside the South African Flag and images of footballs on promotional material. FIFA alleged that this amounted to Metcash intending to kopen fifa 14 coins its product with the World Cup without permission and accused the company of passing off and trade mark infringement. Citing clause 15A of the Merchandise Marks Act, the court found against Metcash and ordered them to cease production and pay all costs.

In a second case, a sports bar near Pretoria used the words World Cup 2010 on its exterior signage, alongside the flags of the various qualifying countries. Again, FIFA initiated court action for trade mark infringement, passing off and unfair competition and the bar was forced to remove the offending signage.

According to FIFA’s Public Guidelines, “there are many ways an entity can benefit from the 2010 FIFA World Cup™ without using the marks or commercially associating itself with it.” They do, however, ask that non-affiliated entities respect FIFA’s intellectual property and “conduct their activities without commercially associating themselves with the 2010 FIFA World Cup™.”

This is all well and good, but agencies will tread a fine line between making the most of the marketing opportunities the World Cup will bring and falling foul of the law. The breadth of the marks and IP owned by FIFA are such that they are easily infringed even by those who are trying to act within the law, and in many cases, professional IP advice will be a must.

For example, the use of the descriptive words “South Africa” when used alongside “2010” would be very likely to give rise to an aggressive response from FIFA, especially if these words were to sit alongside generic football imagery or flags of the competing nations. This is despite the fact that nobody owns the right to the number 2010 or the words South Africa when used in isolation. In Europe, including the UK, FIFA has registered the phrase WORLD CUP 2010 as a European Community Trade Mark covering a large number of commercial activities. It also owns UK registrations for the words WORLD CUP in relation to clothing and footwear.

In order to try and add some clarity, FIFA publishes a Public Information Sheet on its website, which, although not a legal document, does outline what it considers to be its rights and, importantly, gives examples of some dos and don’ts.

According to FIFA, a general advertisement using generic football terms and imagery does not create an unauthorised association. So, for example, “Enjoy the Football with ‘Brand X’ this summer!” is acceptable, but “Enjoy the 2010 World Cup with ‘Brand X’ this summer!” is not.

If your campaign requires that you must use the official marks of the FIFA World Cup then one option is to partner with one of the official FIFA partners or sponsors in a joint promotion. A full list of these partners can be found on FIFA’s website.

Another alternative is to align your brand with grassroots level football in South Africa. For example, registered charity Boots For Africa has an association with FIFA and is understood to be open to commercial sponsorship and promotional activity. Brands associated with these sorts of organisations will, of course, gain the additional benefit of working with a very worthy cause and growing their CSR strategies.

It makes good marketing sense to tap into the passion and excitement of a World Cup tournament, but breaching FIFA’s Fifa 14 Ultimate Team Coins, even unintentionally, could land businesses in serious financial difficulties. If in any doubt, always consult an IP professional so that falling foul of the law does not interrupt the football fun this summer.