This second successful attack was against Metcash Trading (Pty) Ltd for its use of the words 2010 with depictions of the South African Flag and of soccer imagery in relation to its lollipops. The first victory was against Eastwoods Tavern for its use of the words “World Cup 2010” on its signage and use of numerals “2010” and words “South Africa Twenty Ten” on banners featuring flags of soccer playing countries.

With only a few months left before the South Africa 2010 World Cup, traders should familiarise themselves with the concept of ambush marketing and ensure that their marketing endeavours geared towards the World Cup are structured in line with the Dos and Don’ts set out in FIFA’s Public Information Sheet. The Eastwoods Tavern and Metcach (Pty) Ltd cases evidence this need.

Apart from fees FIFA generates from the granting of television rights, and merchandising of goods and services, FIFA relies heavily on sponsorships. The sponsors, in turn, expect protection and exclusivity for their money. Consequently, FIFA is tasked with ensuring that the goodwill associated with the World Cup is not open to abuse and that the interests of the official sponsors of the World Cup are protected.

South Africa World Cup 2010 has been declared a protected event in terms of section 15A of the Merchandise Marks Act. The effect of this declaration is that no one may use a trade mark in relation to the World Cup in a manner calculated to achieve publicity for that trade mark and thereby derive promotional benefit from the World Cup without authorisation from FIFA. Use of a trade mark includes use which may directly or indirectly bring the trade mark in association with or allude to the World Cup. Furthermore, the Trade Practices Act prohibits the publishing or displaying of any false or misleading communication in connection with a sponsored event, which implies an association with the event.

A guide has been posted on FIFA’s website regarding use of their marks, but the reality of the matter is that most people are still not aware of this guide. Hence this discussion would be incomplete without setting out a non-exhaustive list of the Dos and Don’ts in connection with the World Cup, and some of FIFA’s official marks, namely, SOUTH AFRICA WORLD CUP 2010, 2010 FIFA WORLD CUP; FIFA WORLD CUP; SOUTH AFRICA 2010; WORLD CUP 2010; SOCCER WORLD CUP and variations thereof. The Dos and Don’ts include:

1. Distributing branded material ( e.g. caps or T-shirts etc.) either at the stadiums hosting the games or away from the stadiums, to people going to the World Cup, with the objective of obtaining publicity and promotional benefit at the event is prohibited;
2. Use of FIFA’s official marks as part of a business name or trade mark is prohibited e.g. ‘South Africa 2010 Travel Company’;
3. Use of FIFA’s official marks in advertising or any kind of commercial use is prohibited;
4. Advertising at the stadiums hosting the World Cup during the World Cup is prohibited, this includes advertising in the airspace above the stadiums;
5. Advertising using general football images without reference to any of FIFA’s official marks is allowed; and
6. Use of general descriptive words is allowed e.g. Soccer South Africa.

Exploiting the commercial magnetism of the World Cup is possible without using the words SOUTH AFRICA WORLD CUP 2010 and its variations or advertising at the stadiums where the events are hosted.

Given the volumes of tourists who will be travelling to South Africa for the World Cup and thereafter, with the resultant increase in revenue for retailers, restaurants, hotels, bed & breakfast establishments and even for home-owners offering accommodation and the creation of job opportunities, the opportunities are limitless, but need to be carefully crafted to avoid transgression of FIFA’s rights.