In fourteen days time, the Brazil 2014™ FIFA World Cup™ (WC) kicks off in the South American nation of Brazil! As many readers may know, the WC is a Fédération Internationale de Football Association (FIFA) event embodied in the FIFA Statutes. As one of the largest single sports events and most-watched competitions on earth, the WC enjoys phenomenal interest from sports fans and the business world alike.
From an intellectual property (IP) perspective, FIFA has developed and protected an assortment of logos, words, titles, symbols and other trade marks to be used in relation to the WC (the Official Marks). In order to attract funding to stage such a large event, FIFA offers its partners, sponsors and supporters the exclusive rights to use of the Official Marks for promotional and advertising purposes.
The full picture of the WC partners, sponsors and national supporters is available below:
Therefore, according to FIFA, protection of its exclusive rights is crucial for the funding for the WC and therefore non-affiliated entities are asked to respect FIFA’s intellectual property (IP) and conduct their activities without commercially associating with the WC.
In the context of trade mark law, FIFA has registered a number of devices in a wide range of classes worldwide using the Madrid system. In addition, FIFA has also registered several word marks such as: “2014 FIFA World Cup Brazil”; “2014 FIFA World Cup”; “FIFA World Cup”; “FIFA”; “World Cup”; “2014 World Cup”; “World Cup 2014”; “Brazil 2014”; “2014 Brazil”; “Football World Cup”; “Soccer World Cup”; “Copa 2014”; “Copa do Mundo”; “Mundial 2014”; “Mundial de Futebol Brasil 2014”; “Copa do Mundo 2014”; HOST CITY names + 2014 for each of the host cities (e.g. “Rio 2014”, etc.) However it is submitted that if the Official Marks were not registered in Kenya, these Marks might enjoy protection under trade mark law as well known marks.
The law on well known trademarks is traced back to the Paris Convention; Article 6 bis provides for the protection of well known marks by obligating the countries of the Union to afford the highest level of protection to well known marks either on request of an interested party or through its own legislation. Section 15A (2) of the Kenya Industrial Property Act, 2001 allows an owner of a well known mark to obtain injunction to restrain the use and registration of a similar mark subject to section 38B; which is a statutory estoppel to claimant.
FIFA may also be entitled to the common law remedy of passing off to protect the Official Marks. Given the size and scale of the WC, the marks used in connection with the WC have acquired sufficient goodwill among the public. This repute and the goodwill flowing from it, allows FIFA to stop any use by an entity of the Official Marks aimed at suggesting an association between the entity’s goods and services and the WC without the authorisation of FIFA. A notorious form of passing-off is “ambush marketing” where an entity attempts to falsely create the impreesion of being an official sponsor of an event or activity by affiliating itself with that event or activity.
Finally, it is important to note that FIFA is also entitled to copyright protection with respect to the WC Official Marks. These Marks may be categorised as “artistic works” for the purposes of the Kenya Copyright Act, 2001. As the copyright owner, FIFA has the exclusive rights to authorise any reproduction or adaptation of these works by any entity, except where such exploitation falls within the “fair dealing” exceptions and limitations.
In sum, it is clear that FIFA has a considerable IP arsenal at its disposal to commercialise and enforce its exclusive rights before, during and after the WC. In the next post, we will consider in detail, FIFA’s media rights (i.e. public viewing, TV, FM, Web) with respect to the WC games and other events associated with the WC.