FIFA tests extent of South African IP law protection ahead of 2010

FIFA was already in the process of making widespread registrations of marks relating to the tournament, including the official emblem, and has sought further protection for itself and its official sponsors by requesting the South African Minister of Trade and Industry to declare such marks as prohibited, powers which the Minister can activate under section 15 of the country's Merchandise Marketing Act 1941.

Amongst the marks applied for are "RSA 2010", "Football World Cup" and "South Africa World Cup" and various derivations of them.

However, FIFA has admitted that it acted somewhat over-zealously in its attempts to register the number "2010" as a mark in its own right. FIFA has suggested that this particular application may have been made in error and that it has no intention to try to register the trade marks "2010", "World Cup" and other generic words and that FIFA's registration policy is no more stringent than the policy adopted at the FIFA 2006 World Cup held in Germany.

Unauthorised use of registered trade marks can constitute criminal and civil offences under South African law. FIFA has commenced civil infringement proceedings in the Pretoria High Court against four transgressors, who have used marks such as "SOUTH AFRICA 2010", "SOCCER WORLD CUP" and "SOUTH AFRICA WORLD CUP".

Of particular interest is the combined trade mark infringement and design right attack that FIFA is waging against a business which has used devices depicting footballs in conjunction with "2010" and "SOUTH AFRICA 2010". In addition to the claim of trade mark infringement, FIFA is also seeking the cancellation of the registered design right on the grounds that since the distribution of the articles in question is unlawful the design has been registered in breach of FIFA's design rights. The basis of this legal challenge is very much unprecedented and will test the resolve of the South African courts.