“FIFA v. PUMA”

Abstract

• 1. Article 2 lit. c of the Trade Mark Act can particularly preclude the protectability of signs that refer to a certain event of public interest (here: World Cup 2022 in Qatar) when they raise false expectations.

• 2. A risk of deception can arise among other things from the sign leading to an incorrect conclusion regarding the commercial relationships of the trade mark proprietor.

• 3. The ground for refusal under Art. 2 lit. c Trade Mark Act applies to a mark that contains false or misleading information even if it also contains other components that, taken by themselves, are not objectionable, and lend the mark a distinctive character.

• 4. Support of teams or players participating in a football tournament as the one in question (“indirect sponsoring”) is a too weak and merely indirect connection to the event and thus does not rectify a deception.

• 5. Event trade marks such as the word combinations “QATAR 2022” and “WORLD CUP 2022” should be considered as a part of the public domain within the meaning of Art. 2 lit. a of the Trade Mark Act.

• 6. Merely because the application for protection through entry in the register concerns the designation of an event, which is why such marks are sometimes known as “event marks”, does not mean that different – far lower – standards than those required for other marks apply in the assessment of their absolute capability of protection. The so-called “event mark” is also subject to the general trade mark provisions.