Whenever there’s a sporting event of global import, those in the intellectual property business arm themselves against infringement, along with those who seek to infringe without venturing offside. With FIFA’s World Cup impending, Guinness has relaunched a venerable tagline that’s been sitting squarely in IP no-man’s land for decades: “The World’s Cup.”
Need we remind you that Anheuser-Busch has been the World Cup beer sponsor for only 40 years. That Guinness tagline dates to 1990. Trademark law defers to “confusion in the marketplace,” and FIFA would certainly insist that it has indisputable rights to “World Cup.” Hmmm.
FIFA’s IP claim (we await our own cease-and-desist letter) is somewhat weakened by the fact there are numerous sporting events using that same “World Cup” appellation. Included among those: the world cups of rugby, cricket, FIBA Basketball, alpine skiing, wrestling and golf — not to mention those in archery, softball, biathlon, boxing, roller derby, taekwondo and canoeing.
“World Cup can be seen as relatively generic depending on the category involved and how vigorously it has been defended,” said attorney George Daniel, former NLL commissioner and managing partner at Daniel Ebeling Maccia & Cohen. “I’d say there’s potential for litigation at the least.”
Even so, Daniel recalls launching the Urban Fitness League along with Ben Sturner’s Leverage Agency on Coney Island in 2018 with the “World Cup of Fitness.” Still, he added, “You might not want to do that this June and July.”
Now, it’s not as if FIFA has been haphazardly defending its IP. Among its noteworthy cases over the years:
- 2022: Won litigation versus Puma over “PUMA WORLD CUP QATAR 2022″ and “PUMA WORLD CUP 2022” marks, which were cancelled.
- 2010: Another beer brouhaha: Dutch brewer Bavaria ambushed by placing three dozen women in orange dresses in the stands, representing the Netherlands’ national color. The women were removed, and FIFA pursued civil and criminal charges.
- 2010: South Africa’s Kulula Airline was forced by FIFA to pull an ad campaign claiming to be the “Unofficial National Carrier of the You-Know-What.”
By that last standard, it would seem that World Cup and “world’s cup” might be challenged. However, we note that Guinness’ political clout includes the influence that comes with being the beer sponsor of the EPL.
Now, to be clear, no litigation is pending on this. Guinness would tell you that the “cup” being referred to is a pint containing its own brew.
“Absent specific facts and circumstances, a ‘world cup’ for drinking seems like a very defensible use,” said Irwin Kishner, partner at Herrick Feinstein and co-chair of the firm’s Sports Law Group. “These sorts of cases have often been very good annuities for the legal profession. I can assure you lawyers studied this exhaustively.”
You’ll see dozens of World Cup assault marketing attempts over the next two months. Just thought we’d give kudos for one of the best co-ops of top-shelf IP in 45-plus years at the intersection of sports and commerce.
