World Cup Brazil 2014: Trade Mark Enforcement
The games have already started at the 2014 World Cup in Brazil and merchandising products bearing the names of players, national teams, “Brazil 2014”, “WORLD CUP 2014” are being sold everywhere. These are protected trade marks. The issue that arises is the following: how do commercial parties sell products bearing protected trade marks when they are not the owner or licensee of any right in those trade marks?
It is not an understatement to say that FIFA generates much of its income from corporate sponsors and licensees. For this year’s World Cup in Brazil, the official partners of FIFA include Adidas, Emirates, Coca-Cola, Sony and Visa. Exclusive sponsorships have become very lucrative over the years. For example, FIFA’s financial report for the year 2013 indicates that the second biggest source of income was the sale of marketing rights worth USD 413 million, of which USD 404 million was generated in connection with the 2014 FIFA World Cup™!
Trade marks law is the main legal tool to defend and financially exploit a sporting event. It is not surprising that FIFA registered on a worldwide basis numerous trade marks for the World Cup in Brazil. The FIFA World Cup emblem was registered worldwide as far back as 2010. In Mauritius, the logo is registered in classes 25 and 28. Likewise, the Fuleco mascot has been registered as a trade mark since 2012. By registering numerous trade marks for the World Cup, FIFA’s official partners and sponsors like McDonald and Continental have secured a monopoly to label goods and services with the registered trade marks linked to the World Cup.
The FIFA Public Guidelines for Use of FIFA’s Official Marks (“IP Guidelines”), which apply to activities by any third parties on a worldwide basis, including in the host country Brazil, set outs FIFA’s trade mark portfolio: the Official Mark, Official Emblem, Official Mascot, Official Slogan, Official Look Element, FIFA World Cup Trophy, Official Poster, Official Fan Fest Logo, Protected Terms and FIFA.COM logo. FIFA also claims certain intellectual property rights in relation to the names of the venues at which the event is taking place. According to the IP Guidelines, FIFA’s exclusive rights include expressions such as “Brazil 2014″ and, in general, any sign constituted by the name of one of the cities hosting the tournament and the number 2014” – such as “Rio 2014”, “Sao Paolo 2014”, “Fortaleza 2014”, etc. Irrespective of a trade mark’s distinctive function, the IP Guidelines state that simply writing “Brazil 2014” with a standard font and with no device element on a t-shirt would be the subject of legal proceedings as it may lead consumers to establish an unlawful association with FIFA.
A significant part of the IP Guidelines deal with FIFA’s IP rights on the internet. The IP Guidelines state that “FIFA’s official logos, symbols and other graphic trade marks may not be used on any social media platform.” As regards the use of the FIFA.COM logo, there are special rules. The FIFA.COM logo “may only be used on a website as a hyperlink to the homepage of the official website www.FIFA.com”, and only subject to speciﬁc prior approval by FIFA.
Contrary to popular misconception, a trade mark which is internationally known does not obtain automatic protection under the national laws of a country. Trade mark law is territorial and this in two ways. First, it is only possible to enforce trade mark laws and the rights resulting from those laws in the jurisdiction in which those laws were passed. Secondly, trade mark law recognises that the same sign can be used by unconnected entities in different commercial sectors and, in some cases, geographical areas when there is no likelihood of confusion or, if applicable, dilution. Trade marks are protected within a commercial context delineated by specific and real use. Whether a trade mark is a well-known mark is a matter of interpretation within the context of each individual country and is determined in the country in which protection is claimed.
As regards enforcement of trade mark laws in Mauritius, the Industrial Property Office may, for that purpose, solicit the assistance of the Police. The Police is empowered, having regard to its duties under the Police Act, to take all lawful measures to detect offences and apprehend any person who has committed or who is reasonably suspected of having committed an offence. Finally, it is worth noting that any person who infringes the rights of a trade mark holder commits an offence and is liable to a fine not exceeding 250,000 rupees and to imprisonment for a term not exceeding 5 years.