The World (Cup) is full of possibilities

Duncan J Morgan | January 2018

Happy New Year everyone.  From 14 June to 15 July this year, Russia will play host to the FIFA World Cup, the prominent football tournament between the national men’s teams from various qualifying countries across the globe (for readers in the US, the second ‘F’ in FIFA stands for soccer). FIFA has registered a number of trade marks around the world relating to their event, presumably so that they can more effectively police and manage third party use of its various names and logos.

Many of the trade marks associated with the FIFA World Cup (such as ‘FIFA WORLD CUP’) have been registered by FIFA for some time and used in relation to previous tournaments.  However, several of their marks are specific to the date and/or location of the event, such as “WORLD CUP RUSSIA” or “RUSSIA 2018”. The problem with trade marks such as these for bodies which organise such events is that they do not know exactly what to protect until the location for the particular event has been determined. Many territories operate a “first to file” trade mark system, whereby the first party to file for a particular trade mark owns the rights to it, regardless of whether or not a third party has begun using it there or elsewhere. Therefore, it is important for FIFA, or others in their position, to get in early with filing trade mark applications for marks of interest to them if they are to avoid them being snapped up by third parties.

Which country or countries host the FIFA World Cup is subject to a lengthy bidding process, with the winner being announced following a series of votes. The bidding process for the 2018 FIFA World Cup began in 2009, with the winner being selected in December 2010, from a short list of:

  • Belgium and the Netherlands;
  • England;
  • Russia; and
  • Portugal and Spain.

Alas, England may well still be in the World Cup, but the World Cup is not in England. As mentioned above, Russia was successful, and on 2 December 2010 FIFA filed an EU Trade Mark application no. 9569674 for the trade mark RUSSIA 2018. That registration remains in force, and presumably will be used this year to manage the commercial exploitation of the term RUSSIA 2018 in relation to the tournament in the EU.

However, FIFA appears to have been taking no chances as regards the potential winners of the bidding process, as in May 2009 they filed separate EU Trade Mark applications for SPAIN PORTUGAL 2018, HOLLAND BELGIUM 2018, and ENGLAND 2018. All of these registrations remain protected for a very wide range of goods and services.  These include many articles closely associated with football tournaments, such as clothing, soccer equipment, beers, etc., but also a very wide range of other goods and services, such as cosmetic pencils, kitchen towel dispensers and hubcaps, illustrating the potentially very broad range of sponsorship opportunities for such a prestigious tournament.

This means that, on paper at least, FIFA could challenge third parties attempting to register or use marks identical or similar to e.g. SPAIN PORTUGAL 2018 in the EU notwithstanding the fact that their tournament is being held elsewhere (though whether they would wish to appears moot). Those registrations are due for renewal in May 2019, when perhaps they will be allowed to lapse. In the meantime, were FIFA to try to enforce them for some reason, defendants may consider attempting to revoke the registrations, if they have not been used in the EU over the past 5 years.