Beware of intellectual property violation

“While the World Cup is an extravaganza for many, especially for businesses, the intellectual property issue is an uptight issue, which needs a lot of understanding and knowledge,” Dr Dean said.

As the Government has put aside R19 billion to build and upgrade infrastructures – according to Tumi Makgabo, spokeswoman for the Local Organising Committee – expectations are high that many people will do ‘whatever they can' to get a slice of the event's pie.

“Major events such as this require sponsorships and huge investments, without which they will not take place, and sponsors will want to get returns out of their investments,” Dr Dean said.

Primary aim

And FIFA's primary aim is to keep those sponsors happy, and one of the major headaches it faces is to prevent unscrupulous people and businesses bypassing the norms of sponsorships by violating intellectual property rights.

“There will be people who will be tempted to ‘score goals' through ambush marketing – sell as many products as they can through piracy and violation of trademarks and business ethics.”

Dr Dean explained: “Ambush marketing takes place when a trader seeks to utilise the publicity value of an event, for instance a major sports tournament or concert, to gain a benefit from it despite not having an involvement or connection with that event, and more particularly having made no financial contribution to entitle him to derive benefit from it.”

Furthermore, Dr Dean said that there are two ways of benefiting from ambush marketing, one being to do it by association (marketer misleads the public into thinking he is an authorised sponsor contributor associated with event).

The other one is to do it by intrusion (marketer gives his own name, trademark or insignia exposure through the medium of the publicity attracted to the event, this without any authorisation of the event organiser).

“Already infringements”

“We have already seen some infringements taking place in the run-up to 2010,” he said.

It has now been established that some companies have started advertising their products by using the 2010 FIFA World Cup logo and other registered trademarks. Others are manufacturing their products with the 2010 FIFA World Cup logos printed on them.

These, together with other violations, constitute a criminal offence under the Merchandise Marks Act, Trade Practices Act and Copyright Act, and the Counterfeit Goods Act.

It is also a civil infringement under IP Statutes, common law delicts of passing-off and unlawful competition and a breach of the ASA code.

“Consequences”

“There are dire and far-reaching consequences for people taking the ambush marketing route,” Dr Dean warned.

Companies' director(s) could face a hefty fine or a lengthy jail term. There could also be an interdict against the company or director(s), and lastly a prohibition of advertising by ASA.

“Because the stakes are high, marketers must take care and seek legal advice,” he advised. “Protect your trademark by registering it is essential and it must also keep track with developments.”

According to forecasts, the 2010 FIFA World Cup is expected to create an estimated 150 000 jobs, bring in R7 billion in additional taxes, a revenue of R15 billion in tourism from the 350 000 tourists who will visit the country, and has an impact of R20 billion on SA's gross domestic product (GDP).

Dr Dean has 35 years of experience in law practice and is a specialist in trade mark litigation, copyright law, competition law and entertainment and media law. He has been instrumental in writing the SA Counterfeit Goods Act.

He is a former president of the SA Institute of Intellectual Property Law.