Introduction
On November 19, 2022, one day before the commencement of the 2022 Qatar World Cup, the world was shocked by the photo of the campaign shared by Louis Vuitton. Namely, Louis Vuitton unveiled a special brand campaign starring the two goats of the football world – Messi and Ronaldo. The interesting point is concerned with the fact that they were not shooting with the balls this time, instead, they were shooting as a part of the chess game. In addition, the campaign was named after “Victory is the State of Mind”. By this photo, it was, most probably, referred that Messi and Ronaldo would play their last world cup so it was the last chance for them to make checkmate against each other and end up the goat debate. As most of you know, Messi could make this checkmate against Ronaldo and succeeded to end up the goat debate in his favour. Nevertheless, today’s blog post intends to analyze another checkmate concerning the 2022 Qatar World Cup. Namely, FIFA and Puma SE played another, most presumably first, chess game on the issue of the event marks dispute before the commencement of the 2022 Qatar World Cup. In this regard, this blog post will shed light on the interesting points of this case.
Factual background
Prior to delving into the judicial examination, it is worth mentioning the factual background of this case which leads to the judicial opposition between FIFA and Puma SE. German well-known multinational corporation – Puma SE – filed applications for the word marks “PUMA WORLD CUP QATAR 2022” and “PUMA WORLD CUP 2022” in Switzerland on 2 October 2018 and 19 February 2019, respectively. Furthermore, the International Federation of Football Association (“FIFA”) filed applications for the Swiss word and figurative marks of “WORLD CUP 2022” and “QATAR 2022” for a wide range of goods and services on 5 December 2018.
After the respective applications of Puma SE, FIFA filed an action concerning the alleged infringements of trademark and unfair competition law before the Commercial Court of Zurich. By filing this application, FIFA primarily requested the removal of PUMA’s marks from the Swiss trademark register. As a response to this action, PUMA filed a counterclaim by requesting the deletion of FIFA’s marks from the trademark register due to the devoid of distinctiveness. On 31 August 2021, the Commercial Court of Zurich dismissed both the main action and the counterclaim and vindicated the registration of all four trademarks. Regarding this decision, both parties made an appeal to the Swiss Federal Supreme Court.
Swiss Federal Supreme Court Decision
The Swiss Federal Supreme Court made a judgment on 6 April 2022 on the appeal applications of both FIFA and Puma SE. Firstly, the Court dealt with the action of FIFA on the issue of whether Puma’s trademarks were misleading under Article 2(c) of the Trademark Protection Act. The principal argument put forward was based on the ground that Puma’s marks made a reference to the upcoming football World Cup, even though Puma was not an official sponsor of the event.
Regarding this issue, the Court determined that the element “World Cup Qatar 2022” of Puma’s marks would be conceived by the Swiss consumers as a reference to Qatar 2022 World Cup. The Court substantiated this connection on the ground of the considerable importance of football in Switzerland and the high level of interest in the 2022 Qatar World Cup. Herewith, the Court concluded that the combination of the elements “World Cup Qatar 2022” and “World Cup 2022” with the mark “Puma” would cause the perception on Swiss consumers to that there was a special relationship between Puma SE and the World Cup 2022, specifically, in the context of being a sponsor of this World Cup. Accordingly, the Court decided that Puma’s marks were misleading the public under Article 2(c) of the Trademark Protection Act and ordered the cancellation of these marks.
Furthermore, the Court dealt with the action of Puma SE on whether FIFA’s trademarks were devoid of any distinctive character. Firstly, the Court found that FIFA’s marks – “WORLD CUP 2022” and “QATAR 2022” – were composed of the elements indicating the name, venue and year of the event, so that it would be understood by the consumers as indicating the description of the event rather than the origin of the products. In addition, the stylization of the zero in “2022” in the form of a football ball form did not add any distinctive character to these marks. In conclusion, the Court decided that FIFA’s trademarks were devoid of any distinctive character and ordered the cancellation of these marks from the register.
Upon deciding the case, the Court referred it back to the Commercial Court of Zurich to examine the legal claims under the unfair competition law and decide the question of injunctive relief.
The Zurich Commercial Court Decision
The Zurich Commercial Court made its judgment on 28 June 2022 and decided the injunction relief in favour of FIFA. Herewith, the Court prohibited Puma SE to use these marks for a wide range of sporting goods, clothing, and accessories. The Court substantiated its decision on the ground of the Federal Supreme Court’s statements and upheld that Puma’s marks had the character of misleading the consumers under Article 3(1)(b) of the Swiss Unfair Competition Act. Accordingly, not only Puma’s marks were deleted from the registry, but also Puma was prohibited to use them in commerce.
Concluding Remarks
By examining this case, the Swiss courts addressed the public domain character of the event marks for the first time. It was concluded that event marks such as “WORLD CUP 2022” and “QATAR 2022” lacked distinctiveness and belong to the public domain. Nevertheless, the Court qualified its decision with the finding that such public domain character of the event marks did not necessarily imply that they could be used by unrelated third parties, such as non-sponsors, as the latter please as could lead to misleading the public consumers. Accordingly, the Swiss courts determine, to some extent, the special protection regime for the event marks in the case of the lack of distinctiveness.
Bibliography
- Sylvia Anthamatten and Jasmin Büeler, “Federal Supreme Court cancels trademarks referring to 2022 World Cup in dispute between FIFA and Puma”, posted on 01 July 2022, available at: https://www.walderwyss.com/user_assets/publications/Federal-Supreme-Court-cancels-trademarks-refe_Sylvia-Anthamatten.pdf (accessed on 22 January 2023).
- Peter Schramm, “FIFA wins in extra time: The Zurich Commercial Court upholds injunction claim against Puma”, posted on 21 September 2022, available at http://trademarkblog.kluweriplaw.com/2022/09/21/fifa-wins-in-extra-time-the-zurich-commercial-court-upholds-injunction-claim-against-puma/ (accessed on 21 January 2023).
- IP & Technology Law Blog, “FIFA against Puma: who wins the cup in the trademark dispute?”, available at https://www.cuatrecasas.com/en/global/article/international-fifa-against-puma-who-wins-the-cup-in-the-trademark-dispute (accessed 22 January 2023).
The articles on the LAWELS platform are not, nor are they intended to be, legal advice. You should consult a lawyer for individual advice or assessment regarding your own situation. The article only reflects the views of the author.