The missing link: Problems of trademark protection for famous signs in sports

Implications of the judgement of the ECJ in Adidas-Salomon AG & others v Fitnessworld Trading Ltd and of the German Federal Court in Obermaier OHG v UEFA.

The 2006 FIFA World Cup Germany is fast approaching and all the stakeholders involved are awaiting the starting sign for launching their advertising campaigns. The market is highly competitive and those being official partners of the World Cup try hard to defend their association with the World Cup. However, many other big brands, too, will use the tournement for marketing activities. For this reason, in its Guidelines for use of FIFA's trademarks of September 2003, FIFA explicitly emphasizes the trademark protection of its "Event Marks" for the 2006 World Cup and states that only authorized entities are entitled to commercially use these trademarks.

Trademark owners of famous sports trademarks, naturally, try to prevent any association of third advertising campaigns with their trademarks, the event, club or sport respectively. But not each single association with a sports event, club etc. constitutes a trademark infringement. According to Article 5 para. 1 of the Directive 89/104/EEC the proprietor of the registered trademark can prevent the use of an identical trademark in relation to identical goods or services. The trademark protection against similar trademarks under Article 5 para. 2 requires a likelihood of confusion on the part of the public , which includes the risk of association between the sign and the trademark.

Two recent judgements, one of the ECJ in Adidas-Salomon AG and others v Fitnessworld Trading Ltd. of 23 October 2003, another of the German Federal Court [BGH] in Obermaier OHG v UEFA of 25 march 2004 reveal specific problems with such risk of association for famous sports trademarks. In the folling, we will identify these problems and assess the implications for famous sports trademarks in general.