The First Civil Senate of the Federal Court of Justice, which is responsible, among other things, for competition and trademark law, has ruled on FIFA's claims for the cancellation of trademarks registered by Ferrero that relate to the 2006 FIFA World Cup in Germany and the 2010 FIFA World Cup in South Africa.
The plaintiff, FIFA, headquartered in Switzerland, organizes the FIFA World Cups. It holds numerous trademarks referencing the 2006 FIFA World Cup in Germany and the 2010 FIFA World Cup in South Africa. The defendant, Ferrero GmbH, issues collectible cards for FIFA World Cups, which it includes with its chocolate products. Ferrero registered several trademarks also related to the FIFA World Cup to legally protect its collectible card promotion under trademark law. The plaintiff initiated proceedings against the defendant for the cancellation of these trademarks.
The Federal Court of Justice, concurring with the appellate court, rejected the plaintiff's claims for cancellation, considering both trademark and competition law aspects.
The Federal Court of Justice rejected the plaintiff's trademark law claims, asserting that no likelihood of confusion existed between the parties' trademarks, and that the plaintiff could not successfully base its desired claims on work titles such as “WM 2010”, “GERMANY 2006”, and “SOUTH AFRICA 2010”. Claims derived from competition law were also dismissed by the Federal Court of Justice. The defendant's trademarks do not induce the public to erroneously assume that the defendant is an official sponsor of the plaintiff. Furthermore, the defendant's trademark registrations do not anti-competitively impede the plaintiff's efforts to commercialize the FIFA World Cups by granting licenses to sponsors. The plaintiff could also not successfully substantiate the cancellation claims based on the general clause of § 3 UWG. The plaintiff's constitutionally protected right to the economic exploitation of its organized sporting events does not imply that every economic use referencing the sporting event is exclusively reserved for it.
Judgment of the Federal Court of Justice (BGH) of november 12, 2009, I ZR 183/07 – World Cup Trademarks
Lower Courts:
Higher Regional Court of Hamburg – Judgment of September 13, 2007, 3 U 240/05
Regional Court of Hamburg – Judgment of October 25, 2005, 312 O 353/05
Source: Press release of the Federal Court of Justice
Goldberg Rechtsanwälte
Michael Ullrich, LL.M. (Information Law)
Attorney-at-Law and
Specialist Attorney for Information Technology Law (IT Law)
Email: info@goldberg.de
