Riding on the crest of sponsors’ waves – Part 2

Ambush Marketing in the World Cup- Counter-insurgency measures!

The Fédération Internationale de Football Association (FIFA) have vigorously tackled the problem of ambush marketing prior to and during the 2010 South Africa Football World Cup.

TRADE MARK REGISTRATION

FIFA embarked on an extensive mark registration programme prior to the World Cup in South Africa and in fact prior to the World Cup in Germany in 2006. These registered marks form the foundation of FIFA’s intellectual property protection and are the key components which make the contracts with the official sponsors and licensees so valuable.

EXEMPTION FOR SMALL BUSINESSES ?

FIFA’s registration programme was put to the test recently in the South African High Court prior to the World Cup. A restaurant near the Football Stadium in Pretoria, South Africa, added the words “World Cup 2010” to the main sign displaying the restaurant’s name. It also added the words “Twenty Ten South Africa” and “2010” to the flags of various footballing countries in and around the restaurant. The restaurant ignored requests to remove the infringing signs and FIFA applied to the Pretoria High Court for relief. They claimed trademark infringement of ‘World Cup 2010’, ‘South Africa 2010’ and ‘Twenty Ten South Africa’. FIFA also claimed passing off and unlawful competition.

In April , the High Court of Pretoria granted all the reliefs sought and held  felt that the protection given to FIFA did not go so  far so as to hinder competition and adversely effect small businesses.

DUTCH MINIS

However the much publicised recent stunt carried out by the Dutch beer company Bavaria last week at the World Cup in South Africa demonstrates how easily a rival company can leverage off an event, no matter what protections are put in place by the organisers.

Budweiser is the official sponsor of the South Africa World Cup. At the Holland-Denmark World Cup game in Johannesburg a group of 36 women were dressed in orange mini-dresses with the Bavarian sign displayed on the dresses (albeit not easily visible). The dresses are also associated with the lager brand, as they are currently free with packs of Bavaria beer in the Netherlands. The women were spotted by officials, removed from the stadium and the two women who were alleged to have organised the stunt were arrested. FIFA subsequently filed a civil case against Bavaria together with criminal charges against the two Dutch women, alleging contravention of the South African Merchandise Marks Act.

On June 22 last a settlement was reached whereby FIFA agreed to drop all claims, including the charges against the 2 Dutch women, and in return Bavaria agreed to respect FIFA’s commercial program until the end of 2022.

It is clear therefore from FIFA’s mark registration programme that prevention is the key to success against ambush marketing and that measures (as outlined in the first article) must be put in place prior to the event.

IS LITIGATION APPROPRIATE ?

How should one deal with the  guerrilla tactics deployed by Bavaria?
Despite Bavaria being brought to Court and having to agree to respect FIFA’s commercial programme, the company has gained extensive publicity off the back of the World Cup without being an official sponsor, a classic case of Ambush Marketing. This case illustrates how difficult it is to combat ambush marketing by association.
For the organiser and the official sponsors, the less publicity the ambusher gets, the better. Therefore the gravity of each instance of ambush marketing must be carefully measured to determine the severity of action required. Often a threat of legal action such as a ‘cease and desist’ letter will suffice or even a simple phonecall to the infringers outlining their illegal activity may suffice in smaller instances. However there will be instances where the infringement warrants legal remedies such as injunctions or orders for the payment of compensation to deter future ambushers and gain the confidence of current and potential sponsors. 

Next week’s article will look at what legislation has been put in place in the UK ahead of the Olympics and the inadequacies in Irish legislation with respect to Ambush Marketing.
This article was written by Patrick Conliffe, solicitor, and edited by Paul Keane
If you have any queries in relation to the topic of this article please contact Paul Keane at pkeane@reddycharlton.ie or Elaine Mc Grath at emcgrath@reddycharlton.ie or at (353) 01 6619500

Disclaimer

This information is for guidance purposes only. It does not constitute legal or professional advice. Professional or legal advice should be obtained before taking or refraining from any action as a result of the contents of this publication. No liability is accepted by Reddy Charlton for any action taken in reliance on the information contained herein. Any and all information is subject to change.