Member Article

Legal matters: World Cup warning

BUSINESSES are being warned they could end up scoring an own goal if they try to cash in on the forthcoming World Cup.

Intellectual property experts at leading North law firm Ward Hadaway say companies need to be very cautious when it comes to using this summer’s tournament in South Africa to boost their businesses.

They warn that it is all too easy to fall foul of trade mark and other intellectual property laws – and end up paying a hefty penalty.

Alex Shiel, partner and head of intellectual property at Ward Hadaway, said: “The World Cup is a massive event which attracts interest across the globe so the temptation to use that attention to bring in extra revenue is huge.

“However, companies and organisations which look to do so by attempting to associate themselves with the tournament should tread extremely carefully.

“Tournament organisers FIFA and the Football Association in England both have a wide portfolio of registered trade marks which they are ready and willing to protect.

“These trade marks cover far more than you may first think. For example, FIFA has registered ‘World Cup 2010’ as a European Community Trade Mark across a wide range of product sectors, and the FA have registered ‘Three Lions’ in both text and visual form to cover products as diverse as shampoos, keys and kitchen utensils.

“Such trade marks are of great commercial value to FIFA and the FA as they encourage sponsorship of the tournament and the England team.

“Official sponsors are paying for the right to be associated and can legally use the trade marks under licence in their own promotions, in return for payment of significant sums of money for the privilege.

“Companies which have not paid out such sums can expect swift action if they try to use such trade marks in their activities.”

So what is and what is not acceptable for businesses when it comes to cashing in on World Cup fever?

Alex explained: “As an example, FIFA would view a T-shirt with the slogan ‘South Africa Soccer’ as acceptable, but a slogan such as ‘2010 South Africa’ would be challenged as it draws a direct connection to the tournament and is seen by FIFA as having the potential to confuse consumers, who may believe it is an official World Cup product.”

In addition to using trade marked slogans and designs, the World Cup football authorities are also cracking down on so-called ‘ambush marketing’ campaigns.

This is where a non-sponsor of an event attempts to suggest a connection with that event, when competitors or other third parties have paid for the privilege.

In the 2006 World Cup in Germany, beer company Budweiser spent around US$50m to sponsor the tournament only to find that Dutch brewery Bavaria had given out thousands of pairs of orange shorts to Dutch fans which promoted their beer.

Security staff at stadiums were briefed to take the shorts from Dutch fans, leaving over 1,000 fans watching one game in their underpants.

Alex Shiel said: “This is just one example of how far FIFA will go to robustly protect their trade marks.

“FIFA also recently brought an action against a sports bar in Pretoria, South Africa for trade mark infringement, passing off and unfair competition.

“The bar had used the words ‘World Cup 2010’ in promotional banners along with the flags of the competing nations. The bar was forced to remove the signage and pay FIFA’s legal costs.”

This last example shows how companies or organisations planning to hold World Cup parties or events should plan them very carefully to avoid any issues.

Alex said: “As with the last World Cup, many businesses will be looking to hold corporate events centred around the screening of matches, particularly those involving England.

“This can be done without upsetting football’s governing bodies, but the extent of the trade marks held by organisations such as FIFA and the FA make it a potential minefield.

“Expert advice can help deal with any potential issues – and not leave businesses feeling as sick as a parrot.”

This was posted in Bdaily's Members' News section by Ruth Mitchell .