South Africa: Intellectual Property Law And How It Applies To Sport Events

Last Updated: 24 February 2012
Article by Owen O. H. Dean

Major sports are big business and vast sums of money are involved in staging sport events. This global trend was brought into sharp focus in South Africa during the 2010 FIFA World Cup, which provided an excellent example of the role that branding plays in major sports, both generally and more especially in South Africa. Copyright expert at Spoor & Fisher, DR OWEN DEAN, explains how best the law can be applied to benefit everyone involved.

A long established organisation, the Federation Internationale de Football Association (FIFA) has developed a very clear policy for protection of brands relating to the tournament. This has come to the fore more and more in recent years, especially during the 2010 FIFA World Cup.

FIFA adopts and protects several different categories of brands in connection with the World Cup. There are various generic brands which apply to its activities in general and to every World Cup, such as the mark FIFA, and the representation of the World Cup trophy. There are also brands which denote the particular tournament itself, such as GERMANY 2006 and SOUTH AFRICA 2010. Then there are event specific brands such as the official emblem for each World Cup, the official mascot for the tournament, and the name of that mascot. In the case of South Africa 2010, the official mascot was ZAKUMI.

Trademark registration

At the forefront of FIFA's programme to protect its brands is the registration of trade marks. Generic trade marks, such as the mark FIFA, have been registered in South Africa for many years in respect of a wide range of goods and services and consequently no special steps were necessary to prepare for the staging of the 2010 tournament.

FIFA registered the trade marks SOUTH AFRICA 2010 and WORLD CUP 2010 in a wide range of classes. For the event's specific marks, FIFA registered the official logo, the so-called FOOTBALL PLAYER & DEVICE mark, the word ZAKUMI and the MASCOT DEVICE mark in an extensive range of classes. The official logo was the principal event-specific mark and required the most comprehensive protection possible. In addition to registration as a trade mark, the official logo was also registered as a design under the Designs Act in several classes.

For the 2006 FIFA WORLD CUP in Germany, FIFA also registered, or sought to register, various trade marks designating the event. Registration of all of the marks was sought for an extensive range of goods and services. Some marks were refused by the German Federal Supreme Court on the basis that they were basically descriptive of the event itself and therefore non-distinctive.

The South African experience

In South Africa, interestingly, the corresponding marks, such as SOUTH AFRICA 2010 and WORLD CUP 2010, were allowed to proceed to registration by the Registrar of Trade Marks without any objection from any third party, notwithstanding the decisions which had been reached by the European tribunals. South African trade mark law and the European laws are very similar on the question of the non-registrability of descriptive marks and it would have made sense that the South African marks would have suffered the same fate, or at least that they would have been the subject of objections. European counterparts. As it happens, the 2010 FIFA World Cup came and went without a single challenge to these marks, despite the fact that they were relied upon for purposes of the enforcement of FIFA's rights in their marks.

The Merchandise Marks Act, 1941, contains a provision, in Section 15, which allows for the Minister of Trade and Industries to prohibit the use of certain marks. FIFA relied on this provision and made application to the Minister of Trade and Industry for the prohibition of a wide range of World Cup marks. The minister duly issued a notice prohibiting certain of the marks for which protection had been sought, but the protection was made subject to such convoluted and stringent conditions that no efforts were made to enforce any rights under that notice. The minister's attitude in this regard was strange since on previous occasions marks such as the OLYMPIC SYMBOL and designations of other sports events have been granted protection virtually unconditionally. It is possible that the minister thought FIFA was overreaching itself in the degree of comprehensiveness of the protection that it was seeking for its marks, particularly given the wide range of trade mark registrations which had simultaneously been sought.


The common law remedy of passing-off also provided FIFA with a vehicle for protecting its marks. The enormous publicity attached to the staging of the 2010 World Cup undoubtedly established a strong and significant repute in FIFA's various trade marks connected with the event. This repute, and the goodwill flowing from it, provided an ample platform for FIFA on which to make passing-off claims where other parties used marks wrongly, suggesting an association between goods/services to which they were applied and the tournament, without FIFA's authority. A finding that such a repute had been established was made in the case Federation Internationale de Football Association (FIFA) v Metcash Trading Africa.

FIFA's ability to rely on passing-off was considerably fortified by an earlier case that it had brought in South Africa in 1994 during the time of the FIFA World Cup held in the USA. In that case, FIFA had successfully claimed passing-off against a clothing manufacturer which had marketed clothing bearing the trade mark "WORLD CUP" at the time of the staging of the event in the USA. Even at that time, FIFA was able to satisfy the court that the term WORLD CUP denoted a trade connection with itself. This case was of great significance at the time because in an earlier case the court had held, in dealing with the phenomenon of so-called "character merchandising", that there was no reason to suppose that the public would associate, for instance, a restaurant trading under the mark DALLAS with a television series having the same name. The court thus refused to accept that the practice of "character merchandising" was established in South Africa. FIFA was able to overcome the court's unwillingness to recognise this phenomenon and to satisfy the court that the use of the trade mark WORLD CUP in the given circumstances was likely to cause the product in question to be presumed to have a trade connection with FIFA and the football tournament.

The Trade Practices Act contains a provision which, in the context of major sports events such as the FIFA World Cup, effectively amounts to a statutory form of passing-off that is subject to criminal sanction. FIFA also relied on this provision to protect its trade marks connected with the 2010 FIFA World Cup. Although it and Section 15 of the Merchandise Marks Act are criminal provisions creating no civil law remedies, FIFA successfully used an unlawful competition argument to create a civil law cause of action arising out of the criminal statutes. The cause of action is based on the principle that when a party commits a criminal offence, it objectively acts unlawfully and, if that unlawful conduct causes damage to another party, that party has a claim in delict based on unlawful competition.

Ambush marketing

FIFA and other organisations owning event marks could also derive assistance in protecting their marks from the quarter of the Advertising Standards Association (ASA), a voluntary body constituted by the advertising industry. It has an Advertising Code of Conduct and, as an adjunct to it, a "Sponsorship Code", which reads as follows: Ambush Marketing is the attempt of an organisation, product or brand to create the impression of being an official sponsor of an event or activity by affiliating itself with that event or activity without having paid the sponsorship rights-fee or being a party to the sponsorship contract.

The provisions of paragraph 3.7 of the Sponsorship Code are essentially similar to Section 9(d) of the Trade Practices Act and amount in reality to a codified form of passing-off relating particularly to major sports events. Breaches of these ASA Codes are enforced by various committees constituted by the ASA and a recalcitrant transgressor of the Sponsorship Code can be faced with an embargo on all its advertising imposed by the members of the ASA, which includes all the media and the printing industry. Such an embargo can have a far-reaching effect and penalty for a recalcitrant advertiser.

Artistic works

Finally, the official logo of the 2010 FIFA World Cup, as well as the appearance of the official mascot, constitute "artistic works" for purposes of the Copyright Act. Unauthorised reproduction or adaptation of these works can constitute copyright infringement, which is a useful form of protection in the context of a major event. The same considerations apply, of course, to any mark which constitutes a literary or an artistic work for purposes of copyright law. Copyright infringement in respect of the official logo was in fact relied upon by FIFA in the build up to, and during, the 2010 FIFA World Cup, particularly at a time prior to the corresponding trade mark being registered.

FIFA thus had, and used, a strong armoury of IP weapons at its disposal to protect and capitalise commercially on its branding during the 2010 FIFA World Cup. The commercialisation of the brands connected with the tournament contributed substantially to the tournament being enormously successful in all respects, and particularly from a financial point of view.

Proper utilisation of the law

It's apparent that South African law grants effective protection for sports brands, provided it is properly utilised, as was the case with the 2010 World Cup. This requires a proper understanding of the nature of brands in the field of sports and a considered approach to using the law and the facilities that it makes available to the best and fullest extent. However, sporting bodies and administrators appear to lack a proper appreciation of how sport fits into the intellectual property sphere and fail to adopt well planned strategies to maximise the value of intellectual property, and more particularly trade mark law, in protecting their valuable brands to the fullest extent. This unfortunate state of affairs appears also to extend to Government as well and its thinking is somewhat muddled on the issue.

All parties involved should understand that the administration of professional sport and the staging of major sporting events are big business and they should be treated like any other enterprise in the context of intellectual property rights. Sports brands are valuable items of property and should be treated as such. The example of FIFA and the 2010 World Cup should be salutary and its intellectual property rights protection campaign should be used as a template. When that stage has been reached sport and branding will come properly into its own.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Mondaq Advice Centre (MACs)
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.