Ferrero scores against FIFA in WORLD CUP Cases
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In a series of decisions, the Board of Appeal of the Office for Harmonization in the Internal Market (OHIM) has overturned rulings of the Cancellation Division in which the latter had refused to order the cancellation of the Community trademarks GERMANY 2006, WORLD CUP 2006, WM 2006, WORLD CUP GERMANY, WORLD CUP GERMANY 2006 on the grounds that they were merely suggestive (Cases R1467/2005-1, R1466/2005-1, R1468/2005-1, R1469/2005-1 and R1470/2005-1, June 30 2008). The board did not consider the issue of whether the marks consisted of generic words, as the other grounds raised by the plaintiff, Ferrero OHG mbH, were sufficient to order the cancellation of the trademarks.
The Fédération Internationale de Football Association (FIFA) owned the Community trademarks at issue for goods and services in most classes of the Nice Classification. Ferrero applied for the cancellation of the marks on the grounds that they were devoid of distinctive character.
Over the years, OHIM has gradually become stricter with regard to the registration of trademarks which have a meaning in relation to the goods and/or services covered. This development is illustrated by the decisions at issue: the Cancellation Division concluded that the trademarks were at most suggestive (if at all), whereas the board found that all the trademarks were clearly descriptive.
According to the board, the abbreviation WM stands for Weltmeisterschaft (German for 'world championship') and is easily understandable by German-speaking consumers. Moreover, where the terms 'world cup' and 'Germany' or the abbreviation WM are associated with the year when such competition took place, the general public will not perceive the number to be distinctive.
The board also noted that several organizations and companies organize a large number of events associated with the terms 'world cup' and 'Weltmeisterschaft' or the abbreviation WM. Therefore, the issue was whether the exclusive right to use such terms or a combination thereof could be granted to one of these organizations (namely, FIFA).
It is usual practice to allow the sponsors of major sporting events to use the name of a specific event in connection with its goods and/or services in return for payment of royalties This is the reason why all the trademarks were registered not only for football or sporting events, but also for almost all classes of goods and services. However, in several cases the description of the goods and services was restricted to those "relating to, or to be associated with, football championships". Therefore, it was clear that the trademarks were registered in classes other than Class 41 in order to be used for souvenirs and other promotional items. Although such restriction was added only to a few classes, the board took the view that FIFA tended to use the marks for souvenirs and that "there was a high degree of probability that such practice would be extended to the other products or services enumerated by [FIFA]" (WORLD CUP GERMANY, Paragraph 39). A reference to a well-known sporting event would serve as an indication of the quality of the goods and/or services. Therefore, consumers would buy goods bearing the marks in order to have a souvenir of the event. With regard to the trademark WORLD CUP GERMANY, the board concluded that:
"the trademark at issue describes, in relation to the goods and services at issue, the quality or the nature of the fact that they are souvenir articles or services in relation to, or associated with, the world championship."
The board also considered the fact that, in certain countries, the words 'world cup' cannot be registered by law, but pointed out that the Community Trademark Regulation (40/94) contains no provisions on the issue.
In addition, FIFA argued that the marks had acquired distinctiveness through use. It alleged that, although there are many different world cups, the events organized by FIFA are among the best known. According to FIFA, the relevant public would thus associate the trademarks with the events organized by FIFA. As the Cancellation Division had already held that FIFA had failed to prove that the relevant public would associate the marks exclusively with FIFA, the board held that the part of the Cancellation Division decision on acquired distinctiveness had become final (WORLD CUP GERMANY, Paragraph 61).
Finally, FIFA argued that should the trademarks be cancelled, it would be unable to generate enough income to organize future world cups in the European Union and, as a result, EU member states would be prevented from hosting FIFA competitions. The board reminded FIFA that:
"its interest in enhancing its income by monopolizing descriptive or non-distinctive terms does not make it an important case in the sense of trademark or procedural law" (WORLD CUP GERMANY, Paragraph 70).
Although the decisions deal only with the issues of descriptiveness and lack of distinctiveness, they may be significant in that the board discussed the topic of souvenir articles in broad terms. The owners of well-known trademarks which are used by other companies on souvenir articles may thus be able to sue for trademark infringement, even though the registration of the trademark does not extend to such products. In addition, the decisions clarify the distinction between suggestive and descriptive trademarks.
It remains to be seen whether FIFA will appeal the decisions to the Court of First Instance.
Hans Georg Zeiner, Zeiner & Zeiner, Vienna
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