All I want for Christmas... is the World Cup and to avoid an IP infringement claim

Seamus Nolan, associate in TLT’s tech, IP and data team shares advice on how pubs and bars can avoid an intellectual property infringement claim during the World Cup 2022.

The World Cup is set to look a lot different this year. Sunny beer gardens across the UK will be replaced with cosy pubs packed with football fans and the chants of ‘three lions’ being followed by ‘rocking around the Christmas tree’.

What won’t change, however, are the rules and risks around intellectual property rights infringement and the use of official marks and logos when promoting the World Cup. Hospitality businesses looking to boost profits and capitalise on the winter World Cup should be aware of such risks in order to avoid claims from the likes of the Federation International Football Association (FIFA), The Football Association (FA) and the tournament sponsors.

Intellectual property and ambush marketing

FIFA part funds its competitions through the capital raised from its commercial sponsors and subsequent licensing of its intellectual property rights. Organisations that acquire sponsorship rights make payment in return for the exclusive right to use FIFA’s official marks and logos in their advertising and marketing to exploit the fact they are partnered with the event.

One risk facing the tournament organisers, is the threat posed by ambush marketing from companies who use FIFA’s official marks to advertise themselves as being associated with the event and endorsed by FIFA, without paying any sponsorship fees. This poses a threat to the FIFA sponsorship model as it undermines the exclusive rights of the businesses who have paid heavy sponsorship fees. FIFA therefore has a reasonable concern that official sponsors who are not protected from ambush or parasitic marketing will be deterred from sponsoring future events.

As official marks are registered trademarks, their unlicensed use will amount to trademark infringement. FIFA are keen to limit the impact of ambush marketing on their sponsorships and their lawyers send thousands of letters before action every year to prevent such infringement. Other organisations such as the FA, the hosting country (this time Qatar), players and official sponsors follow the same approach as they want to avoid unofficial sponsors promoting an affiliation with their organisation.

FIFA released extensive guidelines in relation to the promotion of the World Cup. See here: FIFA. These highlight the official World Cup logos and marks, which require businesses to pay a fee for their use. Businesses that use the logos without paying could be seen as infringement.

In addition to the marks laid out in the guidance, FIFA has registered a number of word marks, meaning businesses are not able to use these without payment. These include[1]:

• FIFA WORLD CUP Qatar 2022;

• FIFA WORLD CUP;

• WORLD CUP 2022

• QATAR 2022

FA marks

Organisations such as the FA have also registered trademarks, which if used without paying the appropriate fee, may lead to an infringement. Examples of the FA registered trademarks which relate to hospitality are those which fall under class 43 within the following trademarks: Search for a trade mark - Intellectual Property Office (ipo.gov.uk).

Do’s and dont’s

It is expected FIFA will police the use of their marks. The easiest way to avoid a legal letter and run a successful World Cup promotion, or themed event, is to avoid using the official marks. In order to steer clear of a red card this World Cup, businesses should:

• Avoid using any official wording, even in hashtags, on social media (e.g #FIFAWORLDCUP). Make sure you brief social media teams on the official IP guidelines

• Avoid using player and/or managers name in your advertisement without their consent. This may suggest they are affiliated with your brand, increasing your risks of receiving a legal letter

• Viewings of any world cup fixtures within premises must be licensed

• Avoid using official marks in posters and merchandise, , and avoid using the official marks on apps and/or on the company’s website

• The use of the official marks to promote events such as quizzes, games or lotteries is also forbidden in the guidelines (e.g.  The FIFA WORLD CUP QUIZ). These are regarded as commercial purposes

• It is not permitted to use tournament tickets as prizes to competitions, promotional purposes or live draws unless it has been authorised with FIFA

• Review the Microsoft Word - 20220621_FIFA World Cup Qatar 2022_IP Guidelines_EN guidelines to get a clear understanding of acceptable World Cup marketing.

Thinking ahead

The World Cup is only three months away, so now is a good time to start planning marketing campaigns and promotions. FIFA’s approach dictates they would rather educate and guide organisations on use of World Cup branding, however they are known for litigating to protect their brand and sponsorships. While the likelihood of FIFA taking costly legal action against a smaller pub business is limited, we urge businesses to follow the guidance rather than taking the risk of receiving a legal letter.

If you need assistance in relation to the use of official marks or how to avoid an infringement claim, contact Seamus Nolan and/or Nick Fenner. 

Q&A

Q. Do I have an obligation to provide disability access to my premises?

The Equality Act 2010 requires that ‘suitable adjustments’ are made to accommodate employees and customers with disabilities. What is suitable, depends on your building and whether facilities can feasibly be provided. The duty is proactive, so you should really consider what changes you can make now, rather than wait to see if anyone complains. Remember, disabilities come in all shapes and sizes, so give some thought to what you can positively do to assist customers. And remember to brief your staff of what you expect from them in terms of welcoming all customers to your premises.

Q. The council is threatening to review my pavement licence, can they?

There is no formal review process of pavement licences as there is with your premises licence.

If the licensing authority is of the view that you have breached any condition of your pavement licence they can either revoke the licence or require you to remedy the breach within a specified period of time. In all circumstances if this happens engage with your licensing authority. Failure to comply with the council request may result in you having to pay them a fee.