UK: Lucky Pants And Ambush Marketing — A Trade Mark Attorney's Guide To The FIFA World Cup

Last Updated: 9 July 2018
Article by Akber Ahmed

Once every four years, 32 countries come together for a showcase of cultures and a display of affection for 'the beautiful game' known as the FIFA World Cup. Due to popularity of the tournament around the world, there is a frenzy of official and unofficial marketing activity underway.

Now, when you think about the World Cup, malicious marketing tactics and trade mark law might not immediately spring to mind. However, as Trainee Trade Mark Attorney Akber Ahmed points out, this has stolen headlines at major sporting tournaments before, thanks to (self-anointed) Denmark legend Nicklas Bendtner's lucky pants.

Marketing activities which are designed to build an association between an advertiser and a high-profile event are known as 'ambush marketing'. Ahead of global sporting events like the World Cup, organisers put in place legal protections for official sponsors in an attempt to prevent this activity. There are different types of ambush marketing to be aware of — so whether you're thinking about marketing around the World Cup yourself or just an England fan looking for a distraction from the traditional quadrennial disappointment — here's a quick guide to give you the lowdown before kick-off.

Ambush by association

Ambush by association would exist when a non-official sponsor seeks to associate itself with the FIFA World Cup, or a participating team or player, without permission. This leads the public into thinking that the non-official sponsor is somehow connected with the event.

A prime example would involve direct references involving the use of protected trade marks. Large companies tend to be aware of the restrictions set by FIFA and focus on making indirect references to try to avoid legal proceedings. Indeed, global headphone manufacturer, Beats, ran a creative and successful advertising campaign called 'The Game Before The Game' ahead of the FIFA World Cup in 2014. This campaign featured many football stars who were about to participate in the event, encroaching on Sony's rights as the official sponsor. FIFA took an action to ban players from wearing Beats headphones at the tournament, but could not prevent adverts running around the world because there was no reference to the actual event.

Another example would be where a non-official sponsor sponsors an individual player. You might remember a certain Nicklas Bendtner's (commonly known on social media as 'Lord Bendtner') participation for Denmark in the 2012 European Championship. The ever-humble forward celebrated a goal by lifting his shirt, revealing to the world his lovely Paddy Power underwear. Ultimately, he was fined, despite arguing that they were his 'lucky pants'...

An array of legal measures have been put in place ahead of this year's World Cup to try to 'combat' ambush by association. This includes trade mark and copyright laws which protect the name of the event, logo, official mascots, posters and designs. If a link is created in the minds of the public that a non-official sponsor is associated with the World Cup, misleading advertising and unfair competition law may also be relevant.

Ambush by intrusion

Ambush by intrusion exists when a non-official sponsor seeks to gain brand exposure at an event by targeting audiences in the stadiums or through media. This could involve erecting signs in shot of cameras, blimps or distributing products to fans as they arrive in stadiums, as shown with the incident involving the Bavaria girls at the 2006 and 2010 World Cups.

FIFA has introduced guidelines ahead of the 2018 World Cup to prevent any advertising or trading within a two-kilometre radius of a stadium on a match day that has not been approved by FIFA or its nominees. The Russian administrative authorities have the power to take action against any traders caught falling foul of the guidelines.

Opportunistic ambush

Opportunistic ambush marketing is where the non-official sponsor takes the opportunity to advertise its brand by referring to topical events. This is often done in a witty or whimsical manner. This type of advertising is merely taking advantage of public interest and is less likely to mislead the relevant public into believing that the advertiser has a connection with the event.

A perfect example would be when Oreo produced an advert featuring the image of an Oreo in dim lighting, followed by the line 'You can still dunk in the dark' following a power cut at the stadium hosting the 2013 Super Bowl.

Another great example would be when the flame expired during the 2014 Winter Olympic torch relay. It was relit by a Zippo lighter, which was caught live on camera. Zippo saw this as the perfect opportunity to raise its brand status on social media.

Alternatively, a creative example could be used to poke fun at how an association robustly protects its IP. The International Olympic Committee is well known to enforce its IP rights. A liquor store called Oddbins famously ran adverts pointing out this issue with the message "We can't mention the event, We can't mention the city, We can't even mention the year. At least they can't stop us telling you about this..." followed by details of one of its products.

This type of advertising is problematic for rights holders, as implied references make it harder to argue that consumers are being misled. However, brands may receive complaints from rights holders even though legal action is not pursued.

FIFA guidelines

FIFA has produced a range of guidelines to protect its IP. These include a range of registered and unregistered designs and copyrights existing in works such as posters, emblems and mascots.

The official sponsors are given the right to use FIFA's IP and to use the tournament as a marketing vehicle, but other brands will be subject to strict regulations. A lot of businesses will be keen to use the event to increase revenues and sales, but those who are not an official sponsor will be under the FIFA microscope.

Do's and don'ts

If you're thinking of linking a marketing campaign to the World Cup, it's really important that it does not mislead the public into establishing a link between the brand advertised and the event. If in doubt, look at your advert. If you expect to see an official logo or sponsor on the advert, it may well be that you're in breach of the FIFA Guidelines.

The use of a football or a nationalistic theme by itself is one example where your risk is low — but the more elements that are being combined, the more likely that an ad will be infringing. For example, a Russian theme featuring a well-known Russian ex-footballer. The size of the brand responsible for the campaign is also likely to be a key factor in determining whether there is association with the World Cup and whether it is likely to attract the attention of FIFA.

Another key consideration is context. The timing and placement of an advert can add to the likelihood of an association occurring. If the product has no natural connection to football and a football theme is introduced in a complimentary way, this may be assumed as being an attempt to create an association with the World Cup.

It goes without saying that only official sponsors should use any official Russia 2018 or national team logos, protected terms, designs, images or footage in advertising. You should really try to avoid advertising which otherwise seeks to associate with the World Cup. In contrast, country flags and images of footballs are unlikely to be subject to an objection from FIFA.

13 June 2018

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.

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