2010 Made Easy – Hans Muhlberg

How about a short heads- up on ambush marketing and 2010? asked the publisher. To borrow a phrase from another sporting code – ‘YOU CANNOT BE SERIOUS!’ Why? Because there’s absolutely nothing short and sweet about this thing. For starters, there are at least four statutes involved – the Trade Marks Act, the Merchandise Marks Act, the Trade Practices Act and the Copyright Act; not to mention the ASA Code (seemingly the route of choice for SAFA, which is now mimicking big brother FI and flexing its muscles). As far as I know, FIFA has never made available a list of its trade mark registrations; and on top of that, there was an almighty mess when the so-called ‘prohibited marks’ were announced a few years back. So this is as good as it gets.

There are basically two types of ambush marketing. The first – the more blatant type – involves using a name or logo which might suggest a connection with the event. The situation here is that:

• There are certain logos that you absolutely cannot use without consent and that you probably won’t quibble with. For example, the official World Cup logos, and the official logos of previous World Cups. There are quite a number.
• There are certain terms that you absolutely cannot use without consent and that you might quibble with. For example, South Africa 2010, RSA 2010, SA 2010, Africa 2010, World Cup 2010, Football World Cup, Soccer World Cup and FIFA World Cup. Eastwoods, the pub near Loftus which recently agreed to a consent order in favour of FIFA, had painted the words World Cup 2010 on its roof.
• There are certain terms that you absolutely cannot use, but only if you happen to be organising a football competition. In other words, you can use these terms in relation to any other business. Terms like 2010, World Cup, South Africa World Cup, World Cup South Africa, Cape Town 2010, and the names of all the other host cities followed by 2010.
• Then there’s a grey area. For example, can you use the numeral 2010 with the word soccer or soccer imagery? Or the term World Cup with soccer imagery? FIFA in its Public Information Sheet – which you’ll find on its website www.fifa. com – says, no. It’s worth bearing in mind that just because FIFA says something is unlawful, doesn’t make it so – we do still have courts. It is, however, also worth bearing in mind that FIFA is aggressive when it comes to IP rights and it has a lot more money than you do. So if you do something which FIFA doesn’t like, you are likely to find yourself in court.
• What about soccer imagery on its own? The FIFA website seems to imply that this will be fine. So Kulula’s use of soccer balls on its planes is OK! I would’ve thought so, but I recently read that at the 2006 World Cup, FIFA successfully sued Lufthansa for doing something similar, the argument being the German company’s atypical light- heartedness was prejudicing the rights of the official airline sponsor, Emirates. I look at the extremely wide wording of some of the prohibitions: “misrepresenting a contractual or other connection with the event, associating your brand with the event, creating the impression that your communications relate to the event,” and I no longer feel sure about anything.

The other type of ambush marketing is the sneakier type, where you might not use any name or logo which suggests a link with the event, but you still arguably derive some benefit from it, often through sheer physical proximity. The Merchandise Marks Act is wide enough to stop you using your own brands (with no reference to soccer, 2010 or anything similar) in or around the stadiums, if that use creates an association with the event or alludes to it. So clearly, handing out your company’s t-shirts to fans outside the stadium will not be allowed. This prohibition will be enforced through regulations passed by the host cities. These regulations are likely to create exclusion zones around stadiums and fan parks and alongside major routes to stadiums, where no brands other than FIFA’s or those of the sponsors will be allowed. It does, however, seem that businesses which are already situated around stadiums will not need to pull down signage. These regulations will, in all likelihood, also make dedicated police officers and efficient courts (things the rest of us never get to see) available to FIFA.

A quick summary then! Well, when it comes to using terms which might suggest a link with the event, avoid all of those which are expressly verboten. The terms which are allowed outside the context of football competitions are obviously fine, but I wouldn’t combine them with anything like football wording or imagery. Football wording or imagery on its own should, I think, be okay. As for the other type of ambush marketing, we’ll just have to wait for the city regulations to come out.

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Hans Muhlberg LLM MITMA, is an attorney, a UK solicitor and a UK and European trade mark attorney. He consults to Moore Attorneys in Johannesburg.