Criticism grows over World Cup prohibited marks

The Fédération Internationale de Football Association (FIFA) World Cup is one of the biggest sporting events in the world and there is much talk in South Africa about hosting the games in 2010. Countries wishing to host a FIFA World Cup event must provide a range of guarantees, including guaranteeing FIFA’s freedom to use its trademarks and to be protected against ambush marketing and other forms of predation.

The Merchandise Marks Act (17/1941) is an old and much amended piece of legislation, which is being used to try and fulfil these obligations. One of the statutory remedies for ambush marketing is provided by the Merchandise Marks Amendment Act (61/2002), which amended the act by inserting provisions to prohibit the abuse of trademarks in relation to any event declared by the minister of trade and industry to be a ‘protected event’ under Section 15A(1). This designation was established by a notice in the Government Gazette (Notice 683/2006). It is effective from May 25 2006 until six calendar months after June 11 2010, when the World Cup will commence.

This and other steps have been authorised by a special statute, the Second 2010 FIFA World Cup South Africa Special Measures Act 2006. While most of the measures set out in the act  are being viewed as reasonable, controversy has surrounded the minister of trade and industry’s publication of a list of FIFA trademarks and words describing event venues, which he proposes to declare as prohibited marks under the act. These include the words 'World Cup', the date 2010 and such variations as SOUTH AFRICA 2010. The minister derives this power from Section 15 of the act (not Section 15A, which is a later addition), which authorises him to prohibit certain marks that are not trademarks – this is because the definition of ‘mark’ in the act excludes ‘trademark’.

The list is set out in Government Notice 787/2007 and includes the following marks, among others: 

• WORLD CUP; 
• SOUTH AFRICA WORLD CUP; 
• 2010; 
• CAPE TOWN 2010; 
• BLOEMFONTEIN 2010; 
• PORT ELIZABETH 2010; 
• DURBAN 2010; 
• JOHANNESBURG 2010; 
• POLOKWANE 2010; 
• TSHWANE 2010; 
• PRETORIA 2010; 
• NELSPRUIT 2010; 
• RUSETENBURG 2010; 
• TWENTY TEN; and 
• WORLD CUP SOUTH AFRICA.

While few would object in principle to special protection for a mark such as FIFA, the Merchandise Marks Act states that any use of a prohibited mark in virtually any context is a criminal offence. Critics have pointed out that none of the marks on the list is unique to FIFA; in any event, FIFA already has registrations for most of its trademarks (except in some classes where third parties have prior rights). If, for example, using the mark WORLD CUP were prohibited, the current promotion of the IRB Rugby World Cup would constitute a criminal offence. If a prohibited mark is applied to goods then the draconian terms of the Counterfeit Goods Act come into play. It is arguable that one can become a criminal without even knowing about the prohibition, because the act does not specifically require the state to prove guilty knowledge. This leads to so-called strict liability, although it hoped that the courts would interpret the provision as requiring knowledge of the illegality as a prerequisite for liability. As it stands, the list could potentially lead to absurdities, such as making any 2010 calendar illegal, along with any use of the date on newspapers or periodicals.

South Africa’s Constitution is the supreme law of the country and guarantees freedom of expression. While the South African courts do not generally uphold constitutional rights with the same fervour as the US courts, the Constitutional Court is still a fierce guardian of the rights of the individual and could well step in to invalidate a prohibition that goes beyond what is reasonable. Also, as mentioned earlier, it is difficult to imagine how a prohibited mark can also be a trademark when trademarks are specifically excluded from the definition (unlike Section 15A, where they are said to be included). It is possible, then, that the minister would be acting ultra vires if he included trademarks in the final list of prohibited marks.

Until now, prohibited mark status has always been given sparingly. The proposal is thus a radical departure. Given that South Africa has fully functional trademark and copyright laws, with more than adequate remedies for FIFA to use against infringers and counterfeiters, the proposal seems to set a dangerous and wholly unnecessary precedent. The period for filing objections expired on October 2 2007; it is understood that so many have been lodged that the minister may yet reconsider.