Opening shots at 2010 World Cup goal

The Fédération Internationale de Football Association (FIFA) has filed suit against four transgressors which have infringed its rights in the 2010 Football World Cup.

The main objective of FIFA for the 2010 World Cup is to make it a success not only for the players, the football fans and the game of football, but also from a financial point of view. To this end, FIFA is actively pursuing a rigorous rights enforcement programme to curtail unauthorized use of the event for promotional purposes. The threats come from two quarters:

• the distribution of counterfeit merchandise; and
  
  
• ambush marketing (ie, the conduct of trading and/or promotional activities which misrepresent some form of connection, whether by way of licence or sponsorship, with the World Cup, or, without necessarily suggesting a connection with the event, seek to use the event as a means of promoting the traders' own goods or services, often in competition with an official sponsor).

In order to ward off the unwelcome attentions of counterfeiters and ambush marketers for the 2010 World Cup, FIFA registered various words and logos (including the official emblem) as trademarks and registered designs. It also sought protection of various marks in terms of Section 15 of the Merchandise Marks Act, which provides for the minister of trade and industry to declare various trademarks as prohibited marks. FIFA also arranged for the 2010 World Cup to be declared a protected event in terms of Section 15A of the act, which affords special protection against ambush marketing. Finally, FIFA placed itself in a position to rely on copyright in various works, and on the common law of passing off and unlawful competition.

With the 2010 tournament less than three years away, FIFA decided to launch litigation in the High Court against four transgressors. This litigation is the culmination of demands made during the past few years against unlawful activities pertaining to the 2010 World Cup; it marks the advent of a new phase of enforcement where FIFA is demonstrating its resolve to deal firmly with recalcitrant wrongdoers.

In mid-November 2007 FIFA issued papers out of the Pretoria High Court against four separate infringers. The wrongdoers conduct business in, respectively:

• the trade in key rings, ornaments and the like;
  
  
• restaurant services;
  
  
• accommodation and hospitality services; and
  
  
• foodstuffs.

Although the nature of the infringing activities brings about variations in the causes of action and claims which FIFA has brought against the transgressors, there is a significant amount of commonality in the various cases. The four complaints and causes of action rely on a variety of the weapons at FIFA's disposal and are aimed at the use of:

• marks such as SOUTH AFRICA 2010, SOCCER WORLD CUP and SOUTH AFRICA WORLD CUP; and
  
  
• devices depicting footballs in conjunction with 2010 or SOUTH AFRICA 2010.

The cases rely on infringement of various registered trademarks consisting of or incorporating the aforementioned elements. The trademark infringement claims are supported by claims of passing off, relying on the reputation attaching to the 2010 World Cup and insignia denoting it, as well as on the resultant confusion which arises when third parties use marks or other insignia which suggest a connection in the course of trade with the event or with FIFA. Furthermore, FIFA alleged that the use of the offending insignia and the transgressors' trading activities amount to making undue associations with the event, through which they derive promotional benefits in contravention of Section 15A of the Merchandise Marks Act and of the Trade Practices Act. Contraventions of these statutes are criminal offences. FIFA argued that, by acting contrary to law, the transgressors are competing unlawfully with it. FIFA thus sought interdicts restraining the unlawful conduct, delivery-up of all goods bearing offending marks, costs of suit, as well as various other forms of ancillary relief. FIFA also reserved its rights to claim damages from the transgressors in further proceedings.

In one of the cases, the transgressor had registered the shape and configuration of its offending product as a design under the Designs Act. In this instance, FIFA also sought the cancellation of the registered design on the grounds that, because the distribution of the articles in question was unlawful, the design had been registered fraudulently. This is a novel point in South African design law and, to this extent, the case in question is something of a test case on the issue.

It is likely that these cases will cause considerable interest in the business community, as well as some controversy in view of the nature of the marks that FIFA is seeking to enforce. The cases also mark the first occasion on which civil litigation based on unlawful competition has been brought against a party transgressing the criminal provisions of Section 15A of the Merchandise Marks Act. These legal issues give the cases additional importance and their outcome could have a significant bearing on the ability of South African law to counteract ambush marketing. This in turn is of importance to South Africa's ability to attract major international sporting events in the future.

Owen Dean, Spoor & Fisher, Pretoria