Articles

Dos and Don’ts of World Cup branding

Milk & Juice March 2010
By Ian Jacobsberg

The 2010 World Cup is widely seen as an unparalleled marketing opportunity for South Africa and its business community, and it is only natural for South African businesses to attempt to exploit this opportunity to its utmost, by using the event to promote their products and services.

However, FIFA, as the "owner" of the event, is at pains to ensure not only that the goodwill and reputation attached to the event are not open to abuse, but that the interests of the official sponsors, who have entered into agreements with FIFA and who have paid substantial sums of money for the right to have their names attached to the event, are not undermined by "ambush marketing".

"Ambush marketing" is the colloquial term applied to any attempt by a supplier to associate its products or services with an event, despite not being an official sponsor. The supplier uses the event as a platform to promote his brand or product, but without making the financial investment and the other obligations undertaken by a sponsor.

Protected marks
In order to combat ambush marketing, FIFA has sought to protect all variations of the South Africa 2010 logo and all the country-specific logos and symbols of all of the previous football world cup events, as well as all previous world cup emblems and pictures or drawings of the FIFA World Cup Trophy and Jules Rimet Cup (the previous World Cup trophy). As at 6 February 2008, the following marks associated with the World Cup had been registered by FIFA as trademarks and/or as registered designs:

• The Official Mascot
• The Official Emblem
• The Official Poster
• 2010 FIFA World Cup South Africa
• World Cup 2010
• RSA 2010
• Football World Cup
• FIFA World Cup
• South Africa 2010
• SA 2010/ ZA 2010
• 2010 FIFA World Cup
• Soccer World Cup
• World Cup
• South Africa World Cup
• All names of all South African venue cities with the figure “2010” behind them
• Twenty Ten / 2010
• World Cup South Africa.

Apart from the protection afforded by the registration of the names and symbols listed above as trademarks, legislation has been enacted in South Africa specifically in order to provide protection to the organisers and sponsors of high profile events, like the World Cup, that are inevitable targets for ambush marketing. One of these measures is section 15A of the Merchandise Marks Act (the MMA).

What the act states
Section 15A(1) authorises the minister of trade and industry to designate an event as a "protected event". Section 15A(2) reads: "For the period during which an event is protected, no person may use a trademark in relation to such event in a manner which is calculated to achieve publicity for that trademark and thereby to derive special promotional benefit from the event, without the prior authority of the organiser of the event." In other words, any attempt by a supplier of any product or service to use the goodwill generated by the World Cup in order to promote his own brand, without FIFA's prior permission, is prohibited.

A recent judgment granted in FIFA's favour in the North Gauteng High Court illustrates the application of Section 15A of the MMA. The respondent, Metcash Trading Africa (Pty) Limited, had since 1985, sold a range of lollipops known as "Astor" pops. In December 2004, Metcash launched a range of lollipops under the name "Astor 2010 pops". The packaging and marketing material used by Metcash in relation to the lollipops, in addition to the date "2010", featured pictures of soccer balls and partial depictions of the South African flag.

The court found that Metcash was attempting to associate its lollipops with the World Cup and thereby, in the words of the MMA, to "derive special promotional benefit from the event". Metcash was therefore prohibited from continuing to market its "Astor" lollipops using the date "2010" together with pictures of soccer balls and the national flag.

Do it the right way
While some may regard taking advantage of the publicity generated by a high profile event such as the World Cup as simply smart business, as the Metcash case shows, if the event is a "protected event", it is prohibited to do so without the event organiser's authority, and any business person seeking to capitalise on the event should take care to ensure that the limits of what is permissible are not exceeded.

This does not mean that local businesses will not be able to benefit from the publicity around the 2010 World Cup. The event continues to present a massive marketing opportunity for those who are imaginative in how they promote themselves and their products, while at the same time being cautious not to infringe the legislation.
The FIFA Public Information Sheet, which is a guide to FIFA’s official marks, gives various examples of when FIFA’s marks can safely be used in different applications. The booklet can be downloaded from the FIFA website. Naturally, FIFA cannot name every single scenario, but the general message conveyed is quite clear, namely that the publicity around football can be used in a general way to attract customers.

Examples of legitimate use
• Branding that includes general football terms and imagery and does not make use of the FIFA and World Cup trademarks and symbols. Looking at the Metcash judgment, it is not the use of the footballs or South African flags that was problematic, but the combination of these together with the date "2010".

• Non-commercial use of the match schedule. "Commercial use" would occur where a business, not affiliated with the event as an official sponsor, displays its name, branding or logo on the match schedule. It is unlikely that the mere display of an unaltered copy of the match schedule would be considered to be use of a commercial nature and thus would not be problematic.

• Merchandising articles of clothing bearing general football terms and imagery, or terms and imagery relating to South Africa, (or both together) without an associated allusion to the Word Cup, does not create an unauthorised association. In-store decoration with general football-related terms or symbols or terms or symbols related to South Africa, without any reference to the World Cup, would not be prohibited.

Finally, although the information sheet does not mention it, there would also probably be no difficulty with an outlet that sells one of the official sponsors' products displaying advertising for the product, issued by the official sponsor itself and bearing the World Cup imagery. This would naturally attract attention to the venue itself, without infringing the sponsor's rights.

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Ian Jacobsberg

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011 523 6091
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