The First Civil Senate of the Federal Court of Justice, which is responsible inter alia for competition and trade mark law, has ruled on FIFA's claims for cancellation of trade marks relating to the 2006 World Cup in Germany and 2010 in South Africa, which Ferrero had registered.
The applicant, FIFA, which has its seat in Switzerland, organises the football world championships. It is the owner of numerous trade marks which refer to the football World Cups in Germany in 2006 and in South Africa in 2010. The defendant Ferrero GmbH issues collector's cards for the World Cup, which it encloses with its chocolate products. It registered several trade marks which also refer to the World Cup in order to protect its collectible picture campaign under trade mark law. The plaintiff filed a claim against the defendant for cancellation of the trade marks.
The Federal Court of Justice, in agreement with the Court of Appeal, denied the plaintiff's claims for cancellation from the point of view of both trade mark law and competition law.
The Federal Supreme Court denied the plaintiff's claims under trade mark law because there was no likelihood of confusion between the parties' trade marks and the plaintiff could not successfully base the claims sought on work titles with the designations "WM 2010", "GERMANY 2006" and "SOUTH AFRICA 2010". The Federal Court of Justice also rejected claims derived from competition law. The defendant's trade marks did not lead the public to wrongly assume that the defendant was the plaintiff's official sponsor. The defendant did not hinder the plaintiff in an anti-competitive manner in its efforts to market the World Cup by granting licences to sponsors. The plaintiff could also not successfully base the cancellation claims on the general clause of § 3 UWG. The plaintiff's constitutionally protected right to commercial exploitation of the sporting events it organises does not mean that it is entitled to any commercial exploitation that refers to the sporting event.
Judgment of the Federal Court of Justice (BGH) of 12.11.2009 I ZR 183/07 - WM trademarks
Lower courts:
OLG Hamburg - Judgment of 13.09.2007 3 U 240/05
Hamburg Regional Court - Judgment of 25.10.2005 312 O 353/05
Source: Press release of the BGH
Goldberg Attorneys at Law
Michael Ullrich, LL.M. (Information Law)
Lawyer and
Specialist lawyer for information technology law (IT law)
E-mail: info@goldberg.de
