Confectionery maker Ferrero has recently come a cropper in a two- pronged challenge to FIFA’s claimed monopoly rights over soccer World Cup branding. So what’s wrong with ‘World Cup Germany’ in the absence of any specific legislation of the kind that protects Olympic symbols?
Who: Ferrerro & Fifa
Where: The Office of Harmonisation in the Internal Market, Alicante, Spain and the Hamburg court
When: November 2005
Confectionary company Ferrerro launched a concerted challenge to Fifa's claimed monopoly rights over a wide range of branding devices relating to its soccer World Cup.
Ferrerro attacked on two fronts. First of all it filed its own applications to register as trade marks no less than eleven brands which included matter arguably relating to the 2006 tournament and also to the successor tournament in 2010. Included in the various trademarks where phrases such as "World Cup Germany", "2006" and "2010". Fifa challenged these applications and in the Hamburg Court on 20 October 2005 these challenges were upheld and Ferrerro's application rejected.
Ferrerro opposes Fifa's applications
Separately, Ferrerro had filed an official opposition to Fifa's own applications to register a range of World Cup branding devices. These included 'WM2006', 'World Cup 2006', 'World Cup Germany', 'Germany 2006' and 'World Cup 2006 Germany'. All these applications were for community trade marks, valid across the entire European Union.
In early November 2005, the Office for Harmonisation in the Internal Market rejected the Ferrerro challenge and confirmed Fifa's already extant registrations for the designated categories of products and services.
Why this matters:
Sweets makers Ferrerro seems an unlikely trailblazer for the cause of commercial free speech, but like many others before it, the chocolate specialist has failed against increasingly strenuous efforts by sports event rights owners to clamp down on suspected ambush marketing.
The rights attaching to references of the Fifa World Cup tournament are still less comprehensive than those which will attach to the 2012 London Olympics if the London Olympics Bill becomes law. All marketers, however, contemplating any form of reference, direct or indirect, to either of these events should take expert advice before proceeding beyond the concept stage.