For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

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Friday, 13 November 2009

Ferrero v FIFA (in the World Cup trade mark dispute) -- 1:0 says the German BGH

The German Federal Supreme Court (Bundesgerichtshof, "BGH") has today published its decision in a trade mark dispute between FIFA, the world football body, and Italian sweets company Ferrero concerning football World Cup trade marks, which Ferrero GmbH, Ferrero's German subsidiary, had registered. The court's decision is not yet available in its entirety but the court's press release (no. 232/2009 of today's date), on which this report is based, clearly indicates the score of this trade mark match: 1:0 for Ferrero.

So what was this dispute about? FIFA, based in Switzerland, organises the football World Cup and not surprisingly also owns numerous trade marks that relate to the football World Cup 2006, which was held in Germany, as well as trade marks relating to the upcoming World Cup to be held in South Africa next year.

FIFA tried to cancel Ferrero's numerous World Cup trade mark registrations arguing that the Italian sweets maker had no rights to register marks such as "WM," short for Weltmeisterschaft "World Cup" or "2010" in reference to next year's football World Cup in South Africa. FIFA has an obvious interest in controlling its World Cup franchise and claimed that Ferrero's trade mark registrations were an infringement of Germany's unfair competition law.

During past world cup tournaments, Ferrero had distributed free collectible stickers showing each player in the German national team with its Hanuta and Duplo chocolate wafers - and this Kat admits that in days gone by, she used to collected them herself.

The courts of the lower instances, the LG and OLG Hamburg, had both decided in Ferrero's favour. The German Federal Supreme Court agreed and ruled that FIFA could neither base its cancellation claim on trade mark law nor on unfair competition law. The court's press release states that there was no likelihood of confusion between both parties trade marks. (IPKat comment: yes, I am wondering about this bit too: what were the marks? What exactly did FIFA's marks cover? We don't know and the press release unfortunately doesn't tell us.)

Furthermore, the court further decided that FIFA could also not base its claim on the "work title rights" ("Werktitel"- a German quirk) it owned for "WM 2010", "GERMANY 2006" and "SOUTH AFRICA 2010". The judges ruled that FIFA was also barred under unfair competition law, including the so called "general clause" as stipulated by section 3 of the German Law of Unfair Competition (UWG).

Ferrero's trade marks did not influence the consumers to assume that the defendant (Ferrero GmbH) was an official FIFA sponsor. The court held that Ferrero did not unfairly block FIFA's efforts to market the World Cup events via licensing through sponsors. FIFA's basic constitutional right to commercially exploit the tournaments it organises did not extend so far that it could prevent all types of third party exploitation of this sports event.

This should be a very interesting decision to read (once the reasoning is available): with potentially far reaching consequences for organisers of sport (and other events) that seek to financially exploit its events.


Case reference: Bundesgerichtshof, I. Zivilsenat , I ZR 183/07 "WM-Marken" - to read the court's press release, please click here (in German!).

2 comments:

Peter Groves said...

A very quick search reveals that FIFA has a large collection of Community trade marks including several "2010" ones http://oami.europa.eu/CTMOnline/RequestManager/en_Result_NoReg. Ferrero's German ones include 303246219 (http://register.dpma.de/DPMAregister/marke/register/2248418/303246219/DE), 304374482 and 304374490). Perhaps FIFA have some German ones too. Both parties have "WM 2010" registered, for identical goods, with Ferrero's being older (2003). Interesting to note that FIFA seem to have stockpiled registrations covering potential hosts for future years - am I right?

Owen Dean said...

One must be careful when evaluating the relevance and significance of foreign judgments and the like pertaining to ambush marketing to bear in mind that few countries at this stage (and certainly not Germany at the time of the 2006 Soccer World Cup) have an equivalent to section 15A of our Merchandise Marks Act. This section renders unlawful in South Africa ambush marketing by intrusion which form of ambush marketing is not unlawful in those other countries. Accordingly forms of ambush marketing and registration of trade marks which could not be stopped in other countries will probably experience an entirely different fate in South Africa where they relate to an event that has been declared a protected event under our section. An application for a trade mark in South Africa, which trade mark will in use offend against section 15A, ought to be refused registration in terms of section 10(12) of the Trade Marks Act.

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