The Football World Cup: An IP Spectacle

November 23, 2022
V. C. Mathews

A four-year spectacle, i.e., the FIFA World Cup 2022, which captures the imagination of almost 5 billion people worldwide, kicked off on November 20, 2022. No sport is more globally recognised and played than football, or soccer, as it is known in some parts of the world. Their grandest stage captures the imagination of many a country, with matches being watched with loyal fervour and new demi gods arising out of the tournament whose signing fees for their respective clubs could bankroll a country. But this is the FIFA World Cup at its best.

The tournament does bring about numerous challenges, and one such challenge is the protection of Intellectual Property rights. The tournament has close to 5 billion eyeballs on it; therefore, every brand looks to have a presence due to the tremendous commercial value it provides. FIFA has official partners for broadcasting, hospitality, ticketing, etc., who are recognised as official FIFA rights holders. These right holders make substantial financial investments, and such investments will only be forthcoming if FIFA provides them with the exclusive use of their brands during the tournament.

To ensure the education and protection of intellectual property rights, FIFA has an entire section on its website dedicated to brand protection: https://www.fifa.com/about-fifa/commercial/fifa-marketing/brand-protection. FIFA includes several terms and conditions as well as guidelines to protect the investment and exclusive rights granted to their partners and other licensees of the tournament, which include (among others) monitoring and action plans on counterfeit merchandise, ambush marketing campaigns, and social media activity. The rights are actively enforced to prevent misuse and to protect the prestige and value of such a partnership.

The Intellectual Property Guidelines provided by FIFA is an extensive document dealing with numerous aspects of protection. It states that only the official FIFA rights holders can use the official intellectual property rights for commercial purposes. Some of the notable official intellectual property items include the following:

With everyone wanting to celebrate the tournament, there is always a risk of unwanted association with the official intellectual property that may occur. However, the FIFA guidelines show that businesses and the public can use generic football or country-related images and terminology that do not include the official FIFA intellectual property.

Additionally, there is also the added problem of ambush marketing. It is a prohibited marketing activity undertaken by brands to unscrupulously take advantage of the event without the authorisation of FIFA. Ambush marketing previously raised its head during the World Cup in Russia. FIFA has sought to prevent such ambush marketing to ensure that the official sponsors are given as much protection as possible.

FIFA must be lauded for its efforts to create and enforce intellectual property for a sporting spectacle such as the World Cup, and other sporting event organisers must emulate the measures taken by FIFA to ensure the valuable rights of the sponsors are protected.

FIFA includes several terms and conditions as well as guidelines to protect the investment and exclusive rights granted to their partners and other licensees of the tournament, which include (among others) monitoring and action plans on counterfeit merchandise, ambush marketing campaigns, and social media activity. The rights are actively enforced to prevent misuse and to protect the prestige and value of such a partnership.

In the Battle of Stars, Delhi HC Rules in Favor of Star Television

September 20, 2022
Shreya Chaddha
Prerna Dadu

The Delhi High Court has granted an interim injunction in favour of Star Television Productions Limited (Star TV) (Star Television Productions Limited & Anr. V. Eurosport & Ors.) restraining Eurosport, a Warner bros subsidiary, from using the “Eurosport” trademark, tradename or any other mark as being identical/deceptively similar to “Star” marks including the Star device.

Background

Star TV had filed a trademark infringement suit against Eurosport, formerly “Dsport”, Discovery Communications LLC and Discovery Communications India (“Eurosport”). Star TV claimed they had used the Star device and its variants in India since 1991. They contended that Eurosport’s use of the single Star logo with the letter E positioned prominently against the Star was deceptively similar to its registered trademark.

Eurosport responded by claiming that they have been broadcasting sporting events under the name Eurosport since 1989, thereby making them the prior adopters of the mark. They also argued that they are the only registered proprietors of the impugned trademark and all its variations, which have been in use since 2015 in over 100 jurisdictions without any objections from anyone, including the Plaintiffs.

Creative Usage of Common Word

While rejecting Eurosport’s contention, the Court found that the Star logo predated Eurosport’s logo when it first broadcasted its television channel called Star TV in 1992, despite Eurosport adopting a similar logo in 1989 and commencing operations in the European market. The Court observed that Eurosport entered the Indian market only in 2017 and initially as “Dsports” while Star TV had begun expanding its broadcasting operations in India in 1992.

The Court also pointed out that Eurosport had not provided any explanation for using the single Star logo; in contrast, Star TV had chosen the same to be an acronym for “Satellite Television in Asia Region.”

Placing reliance on the observations made by the Apex Court in the cases of Skyline Education Institute (India) Pvt. Ltd. Vs. SL Vaswan (2010) 2 SCC 142, Surya Agro Oils Ltd. Vs. Surya Coconut Oil Industries 1994 SCC Online Del 266 and Mercy Bigi Vs Sunil Kumar, 2015 SCC OnLine Ker 16947, the Court opined that “A word that is descriptive and in common use for a particular object, by its use, should immediately bring to the mind that object alone. A star to a common person would not connect to an entertainment and sports broadcasting channel. The use of a completely unconnected word and device to represent the broadcasting channels of the plaintiffs is a creative usage of the common word which requires to be protected.” Hence, “the Plaintiffs (Star TV) have a right to protect the use of a common word in a novel manner.”

The Court added that Star TV’s right to seek its trademark protection in India would not be impeded despite the co-existence of both trademarks in various jurisdictions.

Grant of Interim Injunction: Analysis

Under the Trademark law, the suit must satisfy three conditions simultaneously to grant an interim injunction.

Prima facie case,
Irreparable loss and injury suffered by the Plaintiff; and
The balance of convenience tilts in favour of Plaintiff.

The Court reached its decision through the following analysis:

While adjudging a prima facie case in favour of Plaintiff, the Court specifically relied on the settlement reached by both parties back in 2018 in which Eurosport had agreed not to use the single star mark.

Eurosport had entered the Indian sports broadcasting arena under the name “Dsport” after “Discovery” had taken over “Eurosport”. They adopted a Single Star Device embedded in the letter ‘D’. Star TV protested by issuing a legal notice dated March 30, 2017. Both parties reached an agreement wherein Defendant agreed not to adopt a mark with a single star.

It is also pertinent to note that “Dsport” mark with a globe has been registered since August 2015 and that Eurosport has also instituted suits against entities that used the Device of a Globe in their mark to assert exclusive rights to their registered trademark of “Dsport” with a globe.

Therefore, the Court held inter alia that “the facts unequivocally establish that the plaintiffs have established a prima-facie case in their favour. The continued dishonest use of the Single Star by the defendants would cause irreparable loss and injury to the plaintiffs, particularly by diluting the unique use of the word ‘Star’, which is a created word, and the “Star‟ logo by common usage.”

Further, the balance of convenience also laid in favour of Plaintiff’s mark as it had managed to build a strong reputation amongst millions of Indian households that watch Plaintiff’s channel (including sports), thereby acquiring the status of a “well-known” mark under Section 2(1)(zg) of the Trade Marks Act, 1999 (“Act”), while Eurosport entered the Indian market in 2017, run their sports channel Dsport for only 18 months and adopted the single Star Eurosport name thereafter.

Noting that continued dishonest use of the Single Star logo by Eurosport would cause irreparable loss and injury to Star TV, the Court granted an interim injunction in favour of the Plaintiff before such dishonest practices by the Defendants dilute the unique use and reputation of STAR and the Star logo.

The Judgement can be accessed here.

“A word that is descriptive and in common use for a particular object, by its use, should immediately bring to the mind that object alone. A star to a common person would not connect to an entertainment and sports broadcasting channel. The use of a completely unconnected word and device to represent the broadcasting channels of the plaintiffs is a creative usage of the common word which requires to be protected.”