In the field of sports, big brands contribute a lot of money and effort to sponsor campaigns for teams around the world. Estimates suggest that the financial services sector spent almost 7 billion U.S. dollars on sports sponsorship deals in 2020[1]. It is then no wonder that the organizers will do their best to not let any free-riders surf on the event’s wave without having paid for it. This was also the reason why FIFA launched a legal battle against the famous sports brand PUMA and its attempts to register trademarks related to World Cup Qatar 2022.
Background of the case
On 5 December 2018, the Fédération Internationale de Football Association ("FIFA") registered the following denominative/figurative trademarks: “WORLD CUP 2022”, and “WORLD CUP QATAR 2022”. The same year Puma applied for registration of two denominative trademarks – “PUMA WORLD CUP QATAR 2022” and “PUMA WORLD CUP 2022”. As a lawful owner of the previously registered trademarks, which might be confusingly similar to those owned by Puma, FIFA has filed a lawsuit to cancel them. The perceived similarity of trademarks, however, was not as big of an issue as the misleading nature of the later marks. According to the World Football Federation, reading the marks, consumers can conclude that Puma is the title sponsor of the event which was not the case. In return, PUMA filed a counterclaim and requested the deletion of FIFA's marks from the trademark register.
Court ruling
First, the Swiss Federal Supreme Court has ruled upheld FIFA’s claim that PUMA’s trademarks were misleading for their reference to the upcoming football World Cup without PUMA being an official sponsor of the event. The reasoning is that the combination of the elements "WORLD CUP QATAR 2022" and "WORLD CUP 2022" with "PUMA" would create an expectation in the relevant public of a special relationship between PUMA and the World Cup 2022.
Second, the Court examined PUMA’s counterclaim for the invalidity of the marks QATAR 2022 and WORLD CUP 2022 for their lack of distinctiveness. The ruling concluded that as mentioned trademarks directly refer to the sports event itself, while at the same time there is no evident connection with any organizer, they are descriptive in nature. Moreover, the Court ruled that adding a sports ball as a graphic element does not add any distinctiveness, as it also refers to the relevant sport.
The dispute between FIFA and PUMA ended up with the cancellation of both of their trademarks.
The main takeaway from this ruling is that no entity has an ultimate right to register the name of the sporting event associated with a date as a trademark, because of (1) its descriptive character as far as the organizer is concerned, and (2) its misleading character for third parties. The result of this dispute signals a feeling of uncertainty and insufficiency when it comes to the protection of exclusivity of merchandise connected to sports events by means of a trademark. This will without a doubt generate a great deal of discussion among sports organizations and their agents as to how to develop better protection strategies against unauthorized manufacturers.
