Modernisation of trade mark law in the USA
The Trademark Modernization Act of 2020 will be implemented in the USA in December 2021.
A World Cup tournament is a marketer’s dream. The swarm of hundreds of thousands of people from around the world to one (or two) countries and millions guaranteed to be watching the action unfold on their televisions results in global brands rushing to gain sponsorship rights. However, it is also an opportunity for organisations to take advantage illegally of the large global audiences.
In anticipation of this year’s World Cup, Brazil enacted the “General World Cup Law” in 2012 which had two main aims; prohibition of ‘ambush marketing by association’ and prohibition of ‘ambush marketing by intrusion’, whilst FIFA still stated it was not opposed to local businesses using generic footballing references to thrive off the hysteria of the World Cup.
This occurs when an unaffiliated marketer uses a name or logo to directly associate itself with a person or event.
This is the act of an unaffiliated marketer who seeks to gain exposure during an event, their primary aim being to obtain broadcasting or alternative media coverage.
The advantage of these types of marketing being that a company can hijack an already built-in audience and associate themselves in a similar way to the official sponsors, but without paying any of the official sponsorship fees.
While these types of marketing are frequently innovative and creative, they also weaken an official sponsor’s association—and the value that the association offers—with an event or person, by creating confusion amongst the general public as to whom the official sponsors are.
Unfortunately for rights holders, there is no specific ‘ambush marketing’ law, but instead they must rely on a combination of trade mark, unfair competition, right of publicity and contract law to prevent ambush marketers associating themselves with the rights holders’ intellectual property. However, the exception to this is the creation of specific event-based legislation, such as the ‘General World Cup Law’ or the ‘London Olympic Games and Paralympic Games Act 2006’, implemented in anticipation of the London 2012 Olympic and Paralympic Games.
Even official sponsors need to be aware of their limitations. One of the official World Cup sponsors, Hyundai, received a cease-and-desist notice from the Brazilian Football Confederation (CBF), the governing body of football in Brazil and the rights holder of the Brazilian National Team. An advertising campaign run by Hyundai plays on the chances of Brazil winning a sixth World Cup. Despite not using members of the Brazil team or any CBF trade marks (men in yellow shirts was the extent of the similarities), the CBF and the Brazilian National Team sponsor, Volkswagen, argued that the advertising campaign violated their rights. While Hyundai are an official sponsor of the World Cup, they are not an official sponsor of the CBF. Hyundai are allowed to refer to the tournament but they are not allowed to refer directly to the Brazil National Team—which is itself a grey area considering the limited references to the Brazil team that were made in the advertising campaign.
Paulo Parente Marques Mendes, partner at law firm Di Blasi Parente & Associados in Rio de Janeiro, said, “As Hyundai is apparently not using any of those official symbols in its commercial promotion, it would be unclear whether the CBF would also prevail in this case if it files a lawsuit.”
In preparation of the World Cup, FIFA filed new applications for nearly 100 trade marks to be considered of high renown covering all goods and services. It is common practice for any major sporting event to combine the name of a host city with the year the event will be taking place (eg. London 2012), however spare a thought for the residents of Natal in north-eastern Brazil. Natal will play host to 4 World Cup matches and hence FIFA secured exclusive rights in Brazil over the expression ‘Natal 2014’.
Unfortunately for the people of this city, ‘Natal’ also means ‘Christmas’ in Portuguese, hence the Portuguese equivalent of ‘Christmas 2014’ is now owned by FIFA. This will potentially make life difficult for shop owners and others attempting to market the festive period, especially as FIFA’s privileges last until 31st December 2014.
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