The World Cup is a mixed bag of elation and reassuringly predictable disappointment to us here in England. Even so, Gregg Latchams expects it to dominate our media feeds for the next two months. You might think that FIFA would see all press as good press. Unfortunately it’s not quite that simple, and businesses looking to capitalise on the predicted uptick in consumer spending during the tournament need to be careful when referring to it.
Accompanying this year’s World Cup is the publication of the 2018 edition of the FIFA Guidelines on use of Official Marks. A timely reminder that world football’s governing body takes the protection of its various brands seriously. Just take a look at some of the headlines in recent years: World Cup brand infringement: why it’s not a good idea (The Drum), Legal advice: Use FIFA’s World Cup trademark at your peril (The Morning Advertiser). Yes, the tournament is in Russia, but their IP rights stretch to the UK and you need to be aware of them.
The Official Marks
Here are some of the more important Official Marks claimed by FIFA:
WORLD CUP – RUSSIA 2018 – (Host City) + 2018 – ZABIVAKA
Most are registered on the UK and EU trade mark registers. Interestingly though, WORLD CUP is currently only registered for football boots and clothing in the UK, and there are no specific registrations for, say, MOSCOW 2018 either. Presumably FIFA intends to police these marks through the law of passing off in England. The fact that WORLD CUP is not registered for, say, computer software, does not mean that using it for a football app is entirely risk free if FIFA can show that they have developed some commercial appeal in that field.
The safest way to avoid threatening action is to follow the guidelines and clear any uncertain marks in advance.
- The key here is to avoid use of FIFA’s marks as trade marks. If you are a branding agency and want to critique the red and blue Faberge-looking-stylisation-of-the-cup logo, then fine. This is editorial use rather than use as a trade mark. If you are looking to use the same logo on posters for the Penryn World Cup of Obscure Cornish Vocabulary, then you can expect a phone call from FIFA’s representatives. The wording used in the Guidelines is that no “commercial association” should be established.
- Avoid creating apps, posters, merch, websites, business names that deploy Official Marks wherever possible.
- The use of FIFA’s marks on competitions/games/lotteries is prohibited in the Guidelines. This will be seen as commercial use by FIFA, and likely by the courts should matters come to that. The reason is that this, more often than not, gives the impression that FIFA is in some way affiliated with a promotion with a commercial outcome. Given the sensitivities surrounding gambling (for example the recent changes to regulation of Fixed Odds Betting terminals), FIFA will be very careful to only be associated with select commercial partners when it comes to competitions of this sort.
- Public viewings of any World Cup broadcast must be licensed.
- Using and sharing official content is permitted on social media unless it is for commercial purposes.
- There are warnings against reusing the Russia 2018 font, and other copyright/design right protected works. Common sense should prevail here – do not mimic or copy their fonts, website, or their “TELSTAR” ball.
The official line is that FIFA prefer to “on education and guidance, rather than enforcement by means of legal threats and sanctions”. However, their willingness to litigate around the world is well documented (see for example the cases against М. Г. А. In Russia, and Ferrero in Germany). Realistically likelihood of costly legal action being taken against small operators accidentally infringing FIFA’s rights is perhaps small, especially when it comes to some of the unregistered rights but even so operators should be very cautious about taking a risk in the first place.
If you are not sure whether a planned use of an Official Mark is likely to be an issue, Gregg Latchams can help you with any questions that you may have for promoting this years tournament.
Please contact Chris Haywood, chartered trade mark and design attorney of the Gregg Latchams Food Drink and Hospitality team.