DTI granting FIFA more rights than normal

The basis for the application is that in terms of the Merchandise Marks Act, the Minister has the right to register certain trademarks as merchandise marks. The effect of this is that if a particular trademark is registered under the Merchandise Marks Act, then the use of that merchandise mark or trademark will be prohibited except if it is used by FIFA or under the consent or authority of FIFA.

Secondly, FIFA, through local attorneys, which I understand will be Spoor & Fisher, has also applied for certain words and emblems to be registered as trademarks. I would expect that these trademarks by now will become registrable. Once the Registrar of Trade Marks at CIPRO (Companies and Intellectual Property Rights Office) has registered the words and emblems as trademarks and he has issued Certificates of Registration, then those trademarks are likewise embargoed and no one would be able to use the trademarks, except only FIFA or under the authority of FIFA.

45 classes

Having consulted with our legal advisors at Cliff-Decker, the position is that the Trademarks Register is made up of 45 classes. Thus, if you want to have total protection for a trademark, it means that you need to register, for example, a slogan such as “2010” or “FIFA 2010” in each of the 45 classes.

For example, says Alan Jeftha, a director at Cliffe-Decker, the class covering motor vehicles means that if FIFA wants full protection, it needs to ensure that there is a trademark “2010” registered in respect of motor vehicles. If it elects to use the words for toys, then similarly it would need to register a trademark in class 28 to cover toys, and so on.

“Often it is impractical to register trademarks in every class,” he says.

It is very costly and secondly it is most unlikely that you will ever have a “FIFA 2010” motor vehicle or “FIFA 2010” sunglasses or “FIFA 2010” foodstuffs or “FIFA 2010” perfumes, etc.

Protected in respect of sport

The reality is that FIFA wants to ensure that the words and emblems are protected in respect of sport, specifically football; it further wants to ensure that the products and services of the official 2010 sponsors are linked to the FIFA 2010 emblems and words.

Thus, for example, says Jeftha, “if Coke is the official sponsor, it then wants to ensure that any beverage owner does not use the words “FIFA 2010” with regard to that owner's beverage. In this way it blocks other product owners from using the words and slogan on their products; thus an embargo is placed on the use of the words and emblems unless they are used with regard to FIFA's football world cup competition or if the words and emblems are used by the sponsors under the authority and consent of FIFA.”
For this reason therefore, the South African Government is seeking to protect 2010 and giving FIFA exclusivity so that in that way no one would be able to use those words with regard to their products and services.

The manner that the Government is seeking to do this is by way of firstly ensuring that those trademarks that FIFA has applied for will be granted, even though it might not be all of the words and emblems in respect of all of the 45 classes.

Criminal offence

Secondly, the Government is using the Merchandise Marks Act in order to ensure that those specific words and emblems that FIFA is seeking to protect will be registered under the Merchandise Marks Act. It then becomes a criminal offence for any party to use any words and emblems that have been registered under the Merchandise Marks Act, unless such usage is with the consent and approval of FIFA.

“The rights being granted by FIFA are therefore much greater than what is normally allowed in terms of the Merchandise Marks Act,” says Jeftha.

A particular example is the reference to say “Cape Town 2010”, “Johannesburg 2010”, the word “2010” on its own. There are other companies such as Twenty-Ten Financial Services and other parties who, in the meanwhile, have started using the word “2010”. The Government is therefore now looking to block out usage of the word so as to ensure that FIFA has exclusive use. The call for objections is therefore to allow those parties, who have rights with regard to the word “2010” and so on, to now lodge their objections.

Once the objections are received on 2 August 2007, which is the closing date, one can expect that the Department of Trade and Industry and its lawyers will then engage those objections and will then make a final ruling.

Once those rulings have been made and also from the time that you get to the closing date for the objections, there will have to be considerable communications around this to inform the public and to ensure that exactly why this is being done and also why there is a necessity by the Government itself to ensure that the word “2010” and the related emblems and marks are protected.

Need for communications campaign

Based on my understanding of these matters, there will be a need for a very huge communications campaign to address this. I can assure you that there will be many businesses all over South Africa who would want to tie their products to the 2010 campaign.

Another area according to Jeftha that needs enquiry is to what extent FIFA is allowing the Department of Trade & Industry or local businesses to contribute towards 2010.

Thus, if there is some or other basis upon which certain concessions or rights are granted, you need to find out whether this is going to take place. If so, then there would be considerable communications and marketing around this and that is to ensure that businesses in South Africa and the public at large will know that there are certain concessions that they could obtain which will allow them to use FIFA-approved material for their products.

If, on the other hand, all of the rights are sold to major sponsors and if the rights are not being pre-concessioned and if there are no concessions to local parties, then that also needs to be conveyed to the public.

In the final analysis, Government needs to think more carefully about its communication and marketing approach on the 2010 FIFA World Cup. Emails and media releases do little more than create awareness of its actions among a small minority.

Educating the broader masses by simple language, demystifying the process and using platforms to secure an understanding of the implications these actions downstream is all part of best practice in a democracy. This will equip citizens with the tools to exercise their power of choice and respond more appropriately on these matters.