Allowed and forbidden: The FIFA trademark rights to the 2006 football World CupTM
Komm_id to the 2006 World Cup.
Lecture at the IHK mittleres Ruhrgebiet to Bochum on the occasion of Komm_id communication competition for the 2006 World Cup
I must first introduce myself and give to recognize this at the same time, why I stand here tonight.
I am an independent lawyer in Bochum for 11 years and consult mainly small and medium-sized companies in all aspects of economic and civil law.
I am active but also focus on sports law and under the company name “Ball contacts” in sports marketing and held in this context as a member of the marketing Club Bochum in June at an event entitled “World Cup 2006 – uses Bochum its opportunities” over the legal limits of marketing in connection with this event a short lecture. As a result, this has led that I have may participate as a member of the jury in the selection of communication ideas for the evening.
My following comments are over titelt in the program with
Allowed and forbidden: The FIFA trademark rights to the 2006 football World CupTM
I’ll may not give a concrete answer you. But, I want to try to bring the legal considerations, that an assessment of the admissibility depends, to put them in the State, to form their own judgment.
I see this topic but not isolated as an introduction into purely legal processes but deliberately in the marketing Club selected context: uses Bochum, or how I have to say here, the Central Ruhr area his chances, use your chances?
Your presence alone here tonight let me some reason interest suspect and suggesting that you deal with the topic in your company. That expectation, the anticipation among football supporters is of course high, we can accept from our individual perception as given. As high and possibly as a reflection of this fact the pressure to act for the company to be able to respond to this event, the anticipation and the positive mood seems to me but. While the ideas of how this can be done are relatively diffuse.
The ground on which your efforts may fall, appear relatively fertile. According to a survey of TNS, 72.2% of the Germans at the World Cup are interested or even very interested in sports from December of the previous year. Trend compared with previous years.
Nevertheless engages communication consultant of grey advertising holding, a global player among the agencies, in a December 2004 of the trade paper Edition with the words “we will advise each customer under these circumstances, to turn off his communication on the World Cup – unless he can take for at least one hundred million euros in the hand” hear
These include the least.
What circumstances are that Mr. herring, said the man, in an interview said. This is primarily from his point of view: the FIFA’s attempt to protect the official sponsors of the World Cup – and to exclude all other. Thus, we are ladies and gentlemen at the real issue.
FIFA is organizer of the sports event that financed them approximately in the ratio of 2:1 with the sale of the transmission and the advertising rights. To give you an idea: in this context, we have figures from the four years between 1999 and 2002. Within this period the FIFA in the marketing area was EUR 522 million and through the sale of broadcasting rights to the World Cup 2002 in Korea & Japan and the Confedcup in the year before to 1.07 billion euros. Conduct the contest itself required an expenditure by about 450 million euros.
The concept of marketing is clearly structured at first glance. FIFA has 16 official partners, which it worldwide and exclusively grants the right to bring yourself and your goods or services with the FIFA World Cup 2006. The posts are different. Mc donalds had to pay 12 million euros for the partner amount, but only for the right to marketplaces even the ball boys on their restaurants. Deutsche Telekom can be approximately EUR 100 million cost is their commitment, and she had from the outset also an improved motivation of their employees in mind, so an effect, which is directed not only to the outside.
In connection with the national sponsors the national OK could prevent at the end still an embarrassment. The sixth sponsor demanded by FIFA was long at the end with the – I must say State-related companies Oddset was found. That have have to pay only €13.9 million, while the engagement costs approx. Euro 20 million Postbank, it you are looking for the Oddsetlogo but on the official sites of FIFA World Cup also in vain. They do not show up simply, what I find it rather embarrassing. The train makes your contribution primarily through contributions in kind.
Please bear in mind that the cost of cards and boxes etc. for the games – are still not included in the above amounts.
FIFA has made a not always the required effort to divide the individual rights, so that it comes to conflicts and disputes between the individual sponsors.
FIFA is obviously attempting to protect your rights and the rights of its licensees. This is legitimate.
Therefore, FIFA launched an extensive rights protection programme in the life, which ensures respect for the rights and the exclusivity of the official partner. So she has invested 14 million Swiss francs in the protection of the exclusive rights prior to the final competition in Japan/Korea about and made nearly 800 applications for registration of the trademark for the official emblem of the FIFA World Cup. With similar financial means she struggles again against unauthorized advertising.
Also a 10-side data sheet with guidelines for the use of the FIFA includes FIFA World Cup brands through the press with an extensive appendix with examples, 2006 what considers unlawful the FIFA solely in connection with the editorial use of the terms.
Now FIFA registered considerably more cases of “Ambush marketing” than four years ago, the Managing Director of FIFA Marketing & TV Germany GmbH is stated in the Frankfurter Allgemeine Zeitung of the 3.12.. While it then was tackled total 1900 cases in 88 countries, already – accumulated approximately half a year before the start of the World Cup – on 1000 cases in 50 countries. FIFA also now announced to be present, who will do nothing other than to verify the observance of trademark protection in any orientation city with at least fifteen people. All other employees and official are of course encouraged to keep an eye on it.
Special statutory no special rules to the page, assist FIFA in other than for example the Olympic Games. There’s a law on the protection of the Olympic emblem and the Olympic title.
Instead, FIFA is referred to general laws, which are known to them probably from its daily practice. There are of course primarily the naming rights, the law against unfair competition UWG and the laws for the protection of designations and marks in Word and image, trademark law.
Possible violations of the UWG and the naming rights are obvious and self-explanatory. In the essential call exploitation and deception.
I not want to deepen them at this point because this impending collision is already in the run-up to the hand.
There is a decision which declared the formulation “official phone card to the football World Cup 1994” inadmissible due to the misleading statement associated because the phone card by the DFB nor by the FIFA was authorized in this context. In the same direction, a decision of the OLG Hamburg goes beyond the formulation “the DFB recommends X and x. official licensee of the DFB. Also, misleading lay UWG § 3. For factual and also legal reasons it is hardly recommended to create the impression in the public, your company is among the official sponsors or is licensed by FIFA.
We want us but here deal with the Markenrechtlichen protection of some terms.
The trade marks Act protects different names.
§ 1 of the law on trade marks is as follows:
Be protected under this law:
1. trade marks,
2. business designations,
3. geographical indications of origin.
In connection with the ‘business name’ for no. 2, a decision of the Hanseatic Higher Regional Court in February is interesting.
A company had register at the German patent and Trademark Office patent in Munich for services, the mark WM 2006 advertising, etc.. The FIFA operation now not about the cancellation proceedings against the registered trademark, but wanted to deny the use of this brand the company by way of injunction. While not supported them also on a trade mark registered in their favor, but coveted flag protection, because she believed that the targeted consumers automatically held the designation “WM 2006” with her “FIFA World Cup Germany 2006” equate.
It was based on an opinion poll conducted by her in the fall of 2003, according to the 69% of all respondents and 99% of football fans know the term as such. 67% of all respondents and 96% of football fans connect with this name the implementation of a FIFA World Cup and at least 58% of all respondents and 92% of football fans connect this event with FIFA. With this survey, the FIFA to the conviction of the Court has proved that she has earned this designation operation of traffic enforcement flag protection.
Interested in the result as well as the justification: in the reasons is literally to read: “the event World Cup 2006 is limited in the perception of the public is by no means sure that some teams of young men play which team wins the World Cup. It is an event of paramount importance – which shows among other things about it that even the Chancellor with had travelled to Geneva to support the German bid for the team and you can read that in their importance to the participating Nations on the enthusiasm of the Greeks at the Europe Championship finally aware of soccer-playing Nations. The football World Cup 2006 is carried out by FIFA with a specially created organisation Commission. So, from point of view of the audience, the event is an organizationally gated and an integral part of the company of FIFA.
The decisions to a protection of registered marks are but another way:
FIFA has can be protected including
also the full name
FIFA World Cup Germany 2006TM
as also FIFA World Cup 2006 TM,
2006 FIFA WORLD CUP TM,
World Cup 2006 TM.
The protected areas include all possible groups of goods and services: more TV such as peat as fertilizer as well as fuel, fungicides herbicides, drinking water fountain, game discs (known as POGs), and sequins for dresses, but also obvious how exposed or recorded sound and image carriers of all kinds, screen saver, balls, sports and fan articles, etc.
I assume that they have a basic idea of what is permitted in connection with protected trade marks. The unauthorised use of trademarks leads to extensive injunctive relief, damages and disclosure requirements.
In the legal assessment of the trademark protection will I begin with a decision in turn of the Hanseatic Higher Regional Court in March 2004.
Was, that a firm for the World Cup 2006 offered commemorative coins, which itself offered the appropriate imprint, nor were licensed by FIFA. The FIFA went here gem. § § 4. 14, TML from the brand “World Cup 2006 registered for them TM“and” World Cup 2006 Germany “” TM“as well as” World Cup Germany 2006 “” TM“before. However, has the company defend dabbles with the note, that she would use the term, the trademark “WM 2006” not “trade terms” as proof of origin, but only descriptive legitimately, as an indication that his product only on the occasion of the event will put out. This line of reasoning will meet us here often with different objectives.
Such descriptive use believes the Court also for the term “WM 2006” as allowed.
FIFA even had here pointed out that the traffic – so literally-seid ever and ever FIFA World Cup or UEFA European Football Championship marked the concerned sport “Football” and the year of hosting “1954” as well as the advertised and abbreviated form of “World Championships”. In this way, the sporting events in television and newspapers, magazines, interviews are, etc generally named.
In this formulation, went and there is traffic in the past not first and foremost a manufacturer Association sports event organisers, but a valid description of the sporting event as such. On the basis of this common usage, it is generally accepted opinion of the Court in this case itself can not called FIFA on the protection of registered marks, if this not as proof of origin, as a wrong connection on FIFA itself or on a licensing refers to, but indicates only in application and dissemination of products on the occasion.
I must warn of a too unbefangenem dealing with this free drawing, however: in the same decision the Court has banned advertising for the publication of the commemorative still because here contested formulation “World Cup Germany 2006” Although joined on the coin itself not in appearance but surfaced only in the advertising. Here was the pursuit of a pure description of the occasion. However the company when applying the product had flagged 2006 the name World Cup Germany by quotes, which usually only names are marked according to the Court. This became the approach here to complain about advertising in the range of a designation of origin.
I must say once again the importance of the decision. The Court generally is based on an existing trademark protection, but considers that a purely descriptive use of the protected term hurt the brand.
The next decisions now take up the proper, central problem: can I claim trademark protection for a linguistic formulation, without the use of a note or a description of an event, not just economic or sporting importance, simply can be drawn.
The company Ferrero has picked up exactly this point. Since 1982, Ferrero primarily advertises their Bashira and Duplo products at World Cup with collecting images, which is the company now by the brand “World Cup 2006 TM“and”World Cup 2006 TM“prevented from saw. Ferrero requested the deletion of the registered trademarks at the DPMA. Against the deletion of affiliated actually had sued FIFA before the Federal Patent Court which ruled on 03.08.2005.
Ferrero led, inter alia, that’s the names “World Cup 2006” and in particular “WM 2006” on any distinctiveness in accordance with § 8 ABS. II No. 1 would be missing TML. The requirement to be able to distinguish goods and services that is what constitutes flag, its origin must apply for event counters. In contrast, the consumer would remove but just pointing out a 2006 takes place in the year World Championship in the sport of football the contested labels without Organizer Association.
Also a requirement would be paragraph according to § 8 II No. 2, because the terms can serve to designate the geographical origin, the time of the production or distribution of goods and services.
Linguistically different assessment standards are expressed. At no. 1 a minimum of lockable distinctive enough to obtain trademark protection, at no. 2 already distant suitability to the General description is enough to bring the brand protection.
FIFA opposed the course and continued a Sooting need does not exist already that’s why, because she have a de facto monopoly.
The Court has not to determine initially with the security required for a deletion that lacks the attacked brand of any distinctive character. It’s not just a common term that consumers use only as such and not as Unterscheidungsmittel, there are at least each distinctive. Already the reputation of the FIFA World Cup is a significant part of the public give rise, goods designated with the goods and services the organiser – who also is always to associate. That did not help further so Ferrero.
Different but with the need for control systems:
The finding of the Court
1. legally justified or de facto monopolies are the question after the representations need not take into account.
2nd World Championships as an abbreviation for the World Championship is a name for an international competition in the sport.
Football describes the sport in which participants compete and not only the round game device.
in 2006, this general statement can not restrict. The year for recurring events describes implementing the year.
Football World Cup 2006 total describes an international football competition in 2006. Remember, this corresponds to the versions of FIFA itself to the language habits in the first case of the OLG Hamburg.
Third party must remain at liberty, free of monopoly rights called to point out, that relate their offerings on a World Cup, there are used or have proven themselves at such.
The Court examined goods and services class then for class, whether these relate to goods and services, which typically come at such events to the usage, such an event is not conceivable without the. Conversely it must be then also the providers allowed, recalling the event name to draw attention to.
Memory and game discs of namely POGs are the opinion of the court usually with conducting such an event-related services, such as travel services, transportation services, hosting and entertainment of guests, etc., balls, soccer equipment, flags and pennants, road maps, cheques and timetables, which are specially designed for such events.
For all goods, which are not necessarily required, or which are not typically described with reference to the event itself, is no need for control systems and thus no deletion reason. These are for example consumer electronics devices, which are required as the technical transmission medium and regularly are increasingly advertised in the temporal relation to such events. The substantive reference to the event to be transmitted is not necessary to describe the devices themselves.
I think the decision from a social aspect out remarkable.
The enormous economic potential of marketing the World Cup explained only by the fact, that she almost but there in particular, permeates the entire public life, not only in the host country, for the duration of the event. The worldwide media presence is incomparable with the exception of the Olympics. This penetration could not reach even an organisation like FIFA alone by licensed and controlled by your company. To the success of the contribution of other providers is required, which FIFA should operate almost mandatory. Transportation logistics, travel information and what know I are not required, to keep visiting the country and the event as a frustranes experience in memory.
That the court contrary to the opinion of the FIFA wants to exclude these providers now not just by the use of labels, which actually cannot be avoided are in the German language in the name of the event, revealed a deeply democratic or – subject to social understanding of economic contexts. I believe this to be right and important.
FIFA has over against the decision, as far as it leads to the cancellation of the brands in some classes, with appeal attacked, that the Federal Court will decide.
I must notice that an identical process with same parties before the harmonization in the internal market OHIM, or after the Spanish and Italian name of OAMI, ended on the 8.11.2005 a defeat for Ferrero. The Office, which is responsible for the control of European brands, did not see a need for keeping. However, Ferrero raised again appeal to the European Court of Justice.
Is funny on this fact that in both decisions, the Federal Patent Court and the Board of appeal of OHIM, explicit instructions, that the decision of the other court had no meaning anyway. As a national and a European Court opinion sovereignty fight clearly.
What does this mean for you.
A response with the claim that this will be binding in the future on the question posed by the title of the lecture “what is allowed and what is not” must I remain you guilty.
FIFA currently has the ability to do both from the European trademarks registered by OHIM, as well as the German marks registered at the DPMA. Remember, in the dispute in Germany go to the legality of the deletion available. As long as this question is not settled, the brand with all the consequences remain registered.
If FIFA but now invokes in this brand protection, risk to make them liable for damages if the Bundesgerichtshof confirmed the deletion of had for previous cases as of the date of submission of the Ferreroklage. Thus a trademark protection in Germany – not because of the European brand – more unenforceable would be retroactive.
It speaks a lot for it that the Supreme Court will confirm the decision of the Federal Patent Court at least of principle. We have seen that the decision has a certain logic and also tradition.
However, we must not forget that the Federal Patent Court in the assessment of goods and services, which are typical for the holding of such events, has not remained without contradictions. Not traceable, the distinction is probably for most, that “WM 2006” may be used for soccer equipment, but not for sports bags.
The resulting legal uncertainty will remain and probably also on the event. Actually no one expects a decision of the Federal Court of Justice before the World Cup.
I come so slowly to the end of my speech, but at the same time return to my starting point:
The opportunities offered by the World Cup.
We once had a World Cup in their own country. 1974 but when I think about myself on the subject, I don’t see a logical series for me rather in 1954, 1974 and 2006. Here, I can not even explain why the meaning for me winning the World Cup in 1990 as clearly falls back on.
in 1954, I was not born yet and can not judge firsthand whether the winning of World Championship in Bern for the awareness of postwar Germany was really the awakening experience, in that it seems to us today from the retrospective.
in 1974 I was twelve. I remember losing to East Germany there also at the water battle of Frankfurt, as well as on the henceforth pointed name formative swallow by Hölzenbein in the final and this impossible body rotation, which was preceded by a 2:1 by “small thick Müller”.
I have also no idea like this, winning the World Cup in your own country, worked on the mood of the population in Germany, which was a year after the start of the oil crisis in the oil-price shock at the actual endpoint of the economic miracle.
I think but regardless of the outcome on the positive effect of the World Cup in Germany next year.
We have not to be discussing away problems in all areas of public life and politics, whose meaning I will not belittle and the solution of which will require much effort.
We have also a comprehensive society as a whole and crushing mood problem that inhibits consumption as well as investment, because belief in the future and their own ability to shaping the future is lost.
The World Cup will help against this mood and there is the chance for all companies.
Regardless of the million visitors from other Nations significant parts of the population are mobile visit, events,
Customize your leisure behavior
and have lasting positive community experiences. This will affect the perception of the own city and the region.
They will also certainly do something, namely where they are often independent income currently difficult do consume without guilt.
If you use this positive mood for themselves, then a chance is the event for your company.
There are certainly others who are called tended to pronounce such a recommendation in this district, the jury, as also of you.
With a few exceptions – the collecting picture story belongs certainly get the discussion about the use of the terms for advertising is not relevant for most of the market participants. I would like to warn, to produce a product or service performance affinity, compared to the World Cup as the driving force of the mood change where actually an affinity does not exist. That would be implausible and therefore counterproductive.
Itself does not necessarily select the World Cup as the content of a strategy, so that they are perceived at that time.
Apart from the fact that it can hardly be considered creative just linguistically to jump on the train, they produce virtually no attention probably behind the big sponsors. There are many other ways, Visual and also linguistic images to make the transfer.
You are safe from the persecutions of the FIFA in each case.
I’m sure that the people are welcoming for any well-made form of marketing, communication and advertising at this time,
also of course for the different concepts that we have chosen this evening in the jury for the idea.
So I wish you lots of fun and interesting ideas, perhaps even with one of the ideas much success next year.
Thank you very much.