As we get closer to the Brazil 2014 World Cup, there is an increasing number of advertisements on radio, television, newspapers and the internet which make reference to the World Cup. Of course, many of these advertisements have absolutely nothing to do with promoting the FIFA World Cup as such; rather, they are adverts that promote products or services of companies whilst at the same time taking advantage of the hype and excitement surrounding the World Cup. For example, you may have an advert by an airline promoting its services that carries the tagline ‘We’ll fly you to Copa 2014’ or an advert by a supermarket with the tagline ‘shop and win a trip to the Brazil World Cup 2014!’.
What many companies and advertising agencies in Kenya may not realise is that commercial use of names/words such as ‘FIFA’ ‘FIFA World Cup’ ‘FIFA World Cup 2014 Brasil’ ‘Brazil 2014’ and ‘Copa 2014’, provided the Fédération Internationale de Football Association (FIFA) has not expressly given its consent for such use invariably through a licensing agreement, may amount to trade mark infringement, actionable in courts of law.
I am not aware of the portfolio of trade marks that FIFA has registered formally in Kenya, but according to the international trade marks registration site WIPO (http://www.wipo.int/romarin/searchAction.do;jsessionid=556702802248C6E41ADEC8F499DBA111) there are currently 17 trade marks registered by FIFA in Kenya through the international registration system (known as ‘Madrid system’). These include:
(1) 
(2) 
(3) WORLD CUP 2014
(4) 
(5) 
These trade mark are registered for almost all goods and services (see post here http://www.linkedin.com/profile/portfolio?id=72475231&authType=name&authToken=AAKD&mediaID=50049308&trk=landing_share on how trade marks must be registered in respect of certain goods or services).
The fact that these trade marks are registered in Kenya by FIFA means that FIFA has the exclusive right to use these trade marks in relation to those goods and in connection with the provision of those services it is registered in respect of.
According to the Kenyan Trade Marks Act, trade mark infringement would arise where a third party, without consent of the owner of a registered trade mark, uses a mark identical with or so nearly resembling the registered trade mark as to be likely to deceive or cause confusion in the course of trade or in connection with the provision of any services in respect of which the trade marks are registered, and in such manner that it appears that there is some connection between the trade mark owner and such third party.
Accordingly, the use in advertisements of, say, FULECO the armadillo- the official mascot of this year’s World Cup- and other FIFA trade marks to promote a product or a service, may amount to trade mark infringement.
Penalties for trade mark infringement in Kenya include injunctions and damages.
Kenyan ads and the World Cup
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2 responses to “Kenyan ads and the World Cup”
Interesting read! Is it that companies are unaware of this concept, or they just go ahead and ride on the “hype” of the world cup with disregard to rights infringements attributable by their actions? What if the company is an official sponsor of the world cup, does that give them a right to use the trade marks?
Most people and most companies which want to advertise or promote their product would quickly jump on to the world cup bandwagon because of the visibility the association will give your product. Anything with ‘hype’ and something with as much hype as the world cup is an excellent marketing opportunity. SO though some people may actually be unaware of the fact that trying to ride of the world cup’s goodwill is illegal, others are not. And anyway, ignorance of the law is not (err…not always…) an excuse. As for the official sponsors, yup they have rights; its usually part of the sponsorship deal.