Legal advice: Use FIFA's World Cup trademark at your peril

World Cup fever is gripping the nation with many rushing out to buy T-shirts, baseball caps and the like or involving themselves in events that they think are associated with the World Cup. However, many retailers, pubs and event organisers may face the wrath of FIFA, football's governing body, if they try to do so without getting the necessary licences and permissions to use the trademarks that FIFA registered as far back as 1979!

FIFA has valid registered trademarks that include "World Cup Germany", "World Cup", "World Cup 2006" and "World Cup 2006 Germany" for a huge amount of products and services covering pretty much everything you can imagine from fake tan, artificial sweeteners and vehicle lubricant to shinguards, umbrellas and football boots.

Can it really be serious? Can it stop licensees from taking advantage of one of the biggest sporting events of the year? It seems it can. A recent press release from FIFA reported that several German courts have confirmed that only FIFA's official sponsors and licensees are allowed to use the FIFA World Cup trademarks as commercial advertising tools. For example, the Leipzig district court has granted FIFA an injunction against the unauthorised use of the "WM 2006" mark - which translates as World Cup 2006 - on a range of products, and any company using the mark would be liable to a fine of up to €250,000 (£170,000).

Infringement on official trademarks

Similarly, the Stuttgart district court has passed a legally-binding decision that prohibits a company from producing and selling a product related to the 2006 FIFA World Cup™ (using terms such as "Fussball 2006") as it does not have the necessary licence to do so. The court also made it clear that any unlicensed trade with a World Cup product - even if it does not infringe on official trademarks - is to be classified as "ambush marketing", which is prohibited by the law on unfair competition.

So exactly what is it you aren't allowed to do? Infringing acts in the course of a trade include:

• Using a trademark which is identical to a registered mark in relation to identical goods or services;
• Using a mark which is identical to a registered mark in relation to similar goods or services provided there is a likelihood of confusion on the part of the public, which includes the likelihood of association with the trademark
• Using a mark which is similar or identical to goods or services provided where there is a likelihood of confusion on the part of the public - again this includes the likelihood of association
• Using a mark which is identical or similar to a registered mark in respect of non-similar goods or services (although this seems unlikely with the huge variety of goods and services that FIFA has registered its various marks against) where the proprietor of the registered mark has established a reputation and the later use would take unfair advantage of that reputation.

Under the Trade Mark Act 1994, use of a mark includes:

• putting it on goods or packaging; or
• offering, marketing or stocking goods or offering or supplying goods under the mark; or
• importing or exporting goods under the mark; or
• putting it on business paper or advertising material.

What impact could this have on you as a publican? In practical terms you should avoid doing anything that could lead your customers to believe that you are associated with FIFA or sell any unlicensed products such as T-shirts and baseball caps.

Additionally, you may be planning to organise an event such as a World Cup special. This was the case for Katja Hartmann, events director with Phoenix Sports Club near Ostheim in Germany, who was forced to rename her World Cup opening day festivals in accordance with FIFA rules.

In a recent interview on www.dw-world.de Ms Hartmann said: "We intended to hold our gala on June 9 under the title 'World Cup Festival 2006' but after applying for the necessary licences we were advised by lawyers that the name could infringe on FIFA trademarks. Unless we were willing to pay lots of money to use it, we had to change the name or go ahead and face the consequences."

Perhaps you should take account of the "official" sponsors of the World Cup which have reportedly paid around €45m (£30m) each for exclusive permission to utilise FIFA's World Cup trademarks before you condemn FIFA for its protectionism. In addition, there are national sponsors such as German Railways and Postbank which have reportedly paid up to €13m (£9m) for permission to use the World Cup logo for their advertising within Germany.

The moral of this story is that if you try and take advantage of the FIFA trademarks in the run-up to the World Cup you should be very careful and cautious indeed, especially when you take into account that during the 2002 World Cup FIFA tracked down nearly 2,000 cases of infringement in over 80 different countries and confiscated more than three million products. Consider yourself warned!