Under concerted pressure from FIFA, delivery specialist TNT recently pulled a B2B ‘Win tickets to the World Cup final’ promotion. What was the problem and just how strong was FIFA’s legal case?
Who: TNT Express and FIFA
Where: The UK
When: April 2006
In a B2B campaign created by Kent direct marketing agency Zest ST, TNT Express sent out 100,000 mailings to prospective customers offering them the chance to win tickets to the FIFA World Cup final.
The snag was that TNT were not official sponsors of the event and had no right or licence from FIFA to conduct the promotion.
FIFA’s enforcer’s fell upon TNT, who quickly agreed to withdraw the mailer and contact recipients to inform them of what had occurred. A website dedicated to the promotion has also been shut down.
Why this matters:
In terms of pure trademark rights, there is a question mark over whether TNT’s actions were contrary to law.
Contrary to the impressions some may have, there are only three registrations of the mark WORLD CUP on the UK trademark register at this time. One is not even owned by FIFA. The mark was filed for in 1984 by a US company called Eve Holdings, Inc. The class of products covered by the registration is cigarettes.
The two other registrations are both owned by FIFA. The first in time was filed for in 1979 and covers “football boots” in class 25. The second was applied for in 1993 and is still in class 25 but extends to “football boots, football shirts, football shorts, football shorts, football socks, football clothing all included in class 25″.
No registration here then for delivery services of the kind provided by TNT Express, which in terms of the Trade Marks Act 1994 means that to pin a case on TNT Express, FIFA would have to be able to establish a case under section 10(3) of that Act. This deals with cases where an identical mark to that registered is used but in relation to goods or services which are quite dissimilar from those for which the mark is registered.
“Reputation” and “unfair advantage” or “detriment” requirements
In such a case FIFA would have to show that WORLD CUP had a reputation in the United Kingdom and that TNT Express’s use of the World Cup sign without due cause took unfair advantage of or was detrimental to the distinctive character or repute of the FIFA trademark. Not necessarily easy to prove.
A separate aspect, however, is that such are the restrictions on the sale and subsequent use of World Cup tickets that the purchase of the tickets by an entity on behalf of TNT Express and their on-supply to winning participants in the TNT Express promotion would likely have automatically breached the terms and conditions of issue of each ticket. On that basis alone the TNT Express promotion had to be a problem for FIFA, and for TNT Express and their winners.
Another risk area for promoters is passing off. Whilst liability for this tort is not necessarily easy to establish, FIFA will no doubt include this in their claims.
The bottom line
The case underlines the extreme dangers in conducting any promotion involving World Cup tickets without the status of an official sponsor and the swift action those representing FIFA are clearly instructed to take against any entity that makes any promotional reference to the forthcoming world event.