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22 September 2014Trademarks

Ambush marketing: lessons from the World Cup

On June 23, while millions around the world watched Brazil beat Cameroon in a group stage match at the football World Cup, the tournament’s organiser, FIFA, had an eye firmly on the waistband of Brazil forward Neymar’s underwear.

Taking his shirt off at the end of the match, Neymar revealed the upper part of the distinctive pair of boxers, made by local company Blue Man. It could have been an accidental slip, but as Blue Man was not a sponsor of the World Cup, and Neymar was giving the company some free exposure, it was investigated as an incident of ambush marketing.

Official viewing figures for the 2014 World Cup have not yet been released, but as group stage matches reached record numbers of viewers around the world, FIFA says it expects to beat the 3.2 billion total of 2010’s World Cup, held in South Africa.

With such a wide reach, opportunities to piggyback on the public attention generated by one of the biggest sporting tournaments in the world can be all too tempting.

FIFA was rigorous in its preparations for preventing the practice, to protect the sponsors that invested millions in the event. How successful were FIFA’s strategies, and what lessons can be learned from the event in time for the 2016 Olympics?

Countdown to the cup

In preparation for the tournament FIFA, in partnership with Brazil, employed a combination of legal and promotional tools to prevent ambush marketing.

For example, Brazil’s so-called World Cup Law came into effect on January 1, 2013, making the practice of ambush marketing a criminal offence.

As Robert Daniel-Shores, a partner at Daniel Advogados in Rio de Janeiro, explains, the law also allowed FIFA to expedite the registering of trademarks related to the World Cup before the Brazilian Patent and Trademark Office (INPI).

FIFA was controversially allowed to register hundreds of marks, he says, many of which were “formed by descriptive terms or lacking any descriptive terms or lacking distinctiveness”, and were automatically regarded as highly renowned.

To raise awareness of the practice, hundreds of cease and desist letters were sent to third parties around Brazil: “In most cases, a positive outcome was reached without the need to take the matter to court,” Daniel-Shores says.

There was also an extension of the “clean stadium policy”, where only publicity related to the official sponsors was authorised, and television publicity slots shortly before, during half-time and shortly after games were restricted to FIFA’s official sponsors.

“Where a sponsor did not wish to use the publicity slot, the TV network was allowed to sell the space only to non-competitors of the sponsors,” he explains.

FIFA also issued comprehensive guidelines on how its official marks and logos could be used. In a 27-page document, it detailed the logos and terms it owns the rights to and outlined the unacceptable uses of these marks.

Any unauthorised use of the “official marks” not only “undermines the integrity of the FIFA World Cup”, but also “puts the interests of the worldwide football community at stake”, it said in the document.

Daniel-Shores notes that FIFA was able to go ahead with many of the actions it took to prevent the practice of ambush marketing only because of the rights it was afforded by the World Cup Law. If these measures are to be taken in preparation for the 2016 Olympics, amendments to the Olympic Act will be necessary, he says.

Brazil adopted law number 12.035 (Lei do Ato Olimpico) shortly after securing the right to host the Olympic Games in 2009. Like FIFA’s guidelines, it sets out a list of symbols associated with the games, and prohibits the registration of trademarks of associated terms or symbols that are likely to cause confusion, without the authorisation of the event’s promoter.

"amendments to the Olympic act are currently being considered, but 'more as a result of the success of measures at the World Cup against ambush marketers, rather than their failure'."

Paulo Parente Marques Mendes, a partner at Di Blasi, Parente & Associados in Rio de Janeiro, says that the structure of the Olympic Act is quite different from that of the World Cup Law and, perhaps most significantly, there are no criminal penalties for violations included in the act.

Daniel-Shores says that amendments to the act are currently being considered, but “more as a result of the success of measures at the World Cup against ambush marketers, rather than their failure”.

The infringers

Marques Mendes says that FIFA was largely successful in its efforts to prevent ambush marketing, but, as might have been expected, there were some high-profile incidences of ambush marketing, and not always as subtle as Neymar’s waistband.

In a more brazen move, Neymar starred in headphones maker Beats by Dre’s YouTube clip The Game before the Game, a five-minute film featuring a host of World Cup footballers listening to music on Beats headphones while preparing for the tournament.

Beats by Dre wasn’t a World Cup sponsor but, at the time of writing, the clip has racked up more than 24 million views, and during the tournament generated countless column inches of publicity. In an attempt to claw back some lost exposure, headphones rival (and World Cup sponsor) Sony sent all participating players a free set of headphones, and FIFA banned the use of Beats headphones at the event.

However, many players, including Mario Balotelli and Luis Suarez, held on to their favoured brand, providing Beats with further valuable publicity; Sony’s attempt at firefighting proved to be an expensive mistake. In a final flourish, Beats hit the headlines again when it gave every player on the winning World Cup team, Germany, a pair of gold headphones.

On to the Olympics

On August 5, 2016, the 31st Olympic Games will begin in Rio de Janeiro. The World Cup has brought the concept of ambush marketing into view. “Just four years ago, hardly anybody knew about or had even heard of ambush marketing,” says Marques Mendes. “Today, society is a lot more informed about it.”

Existing laws already protect the use of the Games’ official logos and marks. For example, the Olympic symbol is protected by the Nairobi Treaty on the Protection of the Olympic Symbol.

Daniel-Stores says: “Considering that the applicability of the provisions of the World Cup Law regarding ambush marketing are somewhat subjective, a close case-by-case analysis is recommended.

“The individual use of a word or image may not be considered as a violation of ambush marketing provisions, eg, since it should be considered as generic and, therefore, of common use. However, it is important to stress that the combination of a number of elements may give rise to infringement claims.”

He suggests that companies’ legal teams work with their marketing departments to avoid incidences of ambush marketing. “Companies must first straighten their internal communications between their commercial/marketing department and legal people. It is also advisable to seek specialised advice to have any and all marketing strategies and material revised.”

The International Olympic Committee (IOC) has not responded to WIPR’s requests for comment about its strategy for the competition, but Marques Mendes says he recommends that the Brazil Olympic Committee takes a leaf from FIFA’s book with its combination of conferences and seminars on the subject, as well as public education.

“The Brazil Olympic Committee (COB) must follow FIFA’s example,” he says.

“The more information they publish, the more they will avoid ambush marketing in Brazil during the Olympic Games.”

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