‘A massive feel-good story’: FIFA’s IP team on protecting the Women’s World Cup 2023

With the FIFA Women’s World Cup 2023 drawing to a close last weekend, the tournament will be remembered as an astonishing success.

Stadiums in Australia and New Zealand welcomed almost two million fans, including over 770,000 fans in the fan zones, and more than US $500 million was generated in revenue for FIFA.

The semi-final between Australia and England had over 40% of the entire country watching.

Speaking exclusively to WIPR, Daniel Zohny, the head of IP at FIFA, and Chris Round, outside counsel and partner at K&L Gates, shed light on the unique IP challenges faced by the event.

“More people watch the [final] Matildas game, as I understand it, than any television sports event in Australia since Cathy Freeman's Gold Medal in the 2000 Olympics,” says Round.

Zohny, after spending five weeks in Sydney, was impressed by how much the tournament grew—especially as football is not the host nations’ number one sport.

“There has been a growing public interest in both New Zealand and especially Australia since [Australia] reached the semi-final stage,” he says.

Round agreed that the Matildas doing well fostered a “massive feel-good story for everybody”.

As a result, he believes that FIFA will treat the next Women's World Cup like the next Men's World Cup with an “equivalent build up and brand protection”.

Getting match ready

The Melbourne office of K&L Gates has helped FIFA with its trademark portfolio in Australia for at least a decade.

Round offered a glimpse into the preparation that goes into protecting FIFA's brand—preparation that begins approximately four to five years in advance.

Zohny, who was responsible for the tournament’s trademark strategy and brand protection programme, says organisers are already in “deep” preparation for the Men’s FIFA World Cup 26, which will be held in Canada, Mexico and the US.

And work on the next Women’s World Cup (host yet to be announced) has already begun.

During this period, FIFA will register a series of trademarks that relate to that particular tournament, such as tournament titles, an official emblem, official mascots and their names, and an official slogan.

For the Women's World Cup 2023, these included the mascot "Tazuni", a “fun, football-loving” penguin, and the slogan "Beyond greatness".

Round emphasises that FIFA's practice is “to have a different set of trademarks for each tournament”, maintaining a fresh brand identity.

This involves deep and complex trademark searches in many countries before a name is selected.

“FIFA then usually files its main trademarks in Switzerland before extending protection to various jurisdictions using the Madrid Protocol. For some Australia/New Zealand specific marks, we just filed country-specific applications here for the tournament,” explains Round.

Zohny and his team were involved all the way through the brand development process, from guiding the brand department’s choice of a viable brand from an IP perspective and devising a registration programme across various jurisdictions.

Not the only ‘World Cup’

The term “World Cup” is used by other sports and businesses, not just FIFA, which can create hurdles with international trademark registrations.

As Round explains: "One of the challenges we tend to face all the time is that FIFA is not the only business that uses ‘World Cup’."

While FIFA “would prefer” that it was the exclusive owner of World Cup marks, because it was the first to organise such an event, others also use the term, he adds.

However, Round explains that, in Australia, the issue is usually resolved by providing evidence of use or intended use of the trademark to show the mark has acquired distinctiveness in the country.

Further complicating the matter is the careful selection of trademark mascot names and slogans, ensuring they are free from offensive connotations and cultural issues.

Inappropriate association

Once this year’s Women’s World Cup began, Zohny and Round noticed the trend of brands wanting to associate themselves with the tournament in ways that weren’t permitted.

“We have experienced instances of unauthorised use of our trademarked logos, primarily in online promotions on social media,” says Zohny.

He outlines how there is “no one-size-fits-all formula” to resolving inappropriate association.

“We handle matters on a case-by-case basis, always with the goal of stopping the association as quickly as possible,” he adds.

This can be done through social media provider takedown procedures for obvious infringements, FIFA or counsel-issued cease and desist letters, or by directly contacting infringing companies and using FIFA’s professional network in the IP community, explains Zohny.

Meanwhile, Round speaks to the specific legal action taken: “We have sent cease and desist letters and often the recipient legal team has been unaware that its social media team has tried to associate with FIFA.”

This seems to have been enough of a deterrent and FIFA has not had to take anyone to court during the Women’s World Cup.

Ambush marketing

The organisation has, however, encountered numerous instances of ambush marketing at the event.

These have been focused on the local market, but also in the US, where third-party brands that are not sponsors of the tournament have intruded upon FIFA events, says Zohny.

“This includes the presence of LED billboards mounted on trucks that drove through the designated ‘clean zones’, promoting a brand that is not affiliated with the tournament or FIFA,” he adds.

These zones received special attention during the Women’s World Cup. With a radius of up to one kilometre, commercial activities within the zones are only permitted with the authorisation of FIFA and typically are reserved for FIFA commercial affiliates, explained Zohny.

However, FIFA was well-equipped to handle infringements using the enforcement tools provided by major events legislation in both New Zealand and several Australian states.

In New Zealand, the Major Events Management Act 2007 (MEMA) played a pivotal role, providing a framework for the management and support of major events in the country.

Round adds: “We haven’t seen massive ambush marketing, like you might have encountered if a big brand was a sponsor at the Olympics.”

FIFA’s IP team: Dynamics and core responsibilities

FIFA’s IP department is composed of eight individuals and divided into two specialised groups. One group concentrated on registration, focusing on securing IP rights related to the tournament, particularly trademark protection. The other group was tasked with brand protection and enforcement.

Zohny describes the three-pillar brand protection programme as: “raising IP awareness,  marketplace monitoring, and swift actions against infringements.”

On-site brand protection extended to employing venue managers at each stadium to ensure sponsor rights were upheld during matches.

“They ensure that our rights and the rights of our sponsors are protected on match days at their respective stadiums. The programme is typically coordinated by a senior member of the team from tournament HQ,” says Zohny.

FIFA has an IP registration team with three in-house paralegals and handles all Swiss and Madrid filings itself.

For other jurisdictions and for enforcement matters it relies on an outside counsel network of about 70, mostly boutique, firms.

The on-site brand protection programme was a pivotal aspect of the tournament.

Clean zones were monitored by patrol teams on match days, collaborating with local enforcement authorities to ensure compliance.

An exception is made for pre-existing businesses under the, as FIFA call it, “business as usual” principle.

The business of a competitor brand can continue as usual, however, no additional activations, such as sending out promotional teams distributing product samples or installing new billboards are allowed.

New markets

The success of the Women's World Cup 2023 has set the stage for future strategies and efforts in managing IP for other FIFA tournaments.

Zohny indicated that the tournament's increasing commercial appeal might expand registration programmes.

“It’s likely that the scope of our registration programmes will expand from a jurisdictional perspective, as the interest has now extended to countries that were not previously considered important markets,” he adds.