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“The team was recently visible advising on a number of pharmaceutical cases. Sources agree that the team is “moving in the right direction” and are particularly impressed by its work in the pharmaceutical sector”.

 

Football Patent. How FIFA Appropriated Names of Russian Cities

13.08.2018

Gadzhimurad Akhmedov, lawyer

Source: Forbes

If adhering to the letter of the law, this year Moscow citizens will not be able to celebrate the Day of the city with its usual symbols, and Samara will not be able to hold the beauty contest without violation of FIFA’s exclusive rights. The violators may face sanctions, namely, the withdrawal of trademarked goods and payment of compensation in the amount of 10 000 to 5 million rubles to the benefit of FIFA
Before the FIFA World Cup in Russia the FIFA took care to protect its symbols and registered more than 50 trademarks in Russia. At the same time, its patent attorneys overacted and Rospatent, on the contrary, has recklessly approached the examination of FIFA’s applications. As a result, even the names of Russian cities hosting the championship became subject to protection. Now, if adhering to the letter of the law, this year Moscow citizens will not be able to celebrate the Day of the city with its usual symbols, and Samara will not be able to hold the beauty contest without violation of FIFA’s exclusive rights.

How many symbols of the current FIFA World Cup do you remember? It is unlikely that you recall at least a dozen. The official mascot Zabivaka Wolf, logo — stylistically decorated image of the FIFA World Cup, official anthem, official ball, official typeface ‘Dusha’ (‘Soul’) (the font itself is copyrighted, and its name is registered by FIFA as trademark)… But even if you list all championship symbols in their different variations, you will obviously not recall 50 trademarks.

So how did FIFA manage to register so many of them? The fact is that FIFA is a legal owner of trademarks in Russia, which consist of the name of the city hosting the FIFA World Cup together with the year of the sport event. Each such trademark (i.e., Volgograd 2018, St. Petersburg 2018, Kazan 2018, etc.) has been registered three times for different types of goods and services. In this case it is solely about word trademarks, that is, the very combination of the name of the city and the year, without any visual elements, is subject to protection.

FIFA’s Exception
If an application for registration of a designation consisting exclusively of the city name and year was filed by any commercial company, it would surely be refused, regardless of the product or service requiring protection. The city names are usually considered to be the non-protectable element of trademarks, precisely because such words as ‘Moscow’, ‘St. Petersburg’, ‘Kazan’ etc. are used in thousands of different combinations and cases (that is, they are devoid of distinctive character), and in this case protection may only lead to confusion and violations.

However, in the case of FIFA World Cup things are different. According to the text of applications for FIFA trademarks registration, ‘Sochi 2018’, ‘Samara 2018’ and similar verbal elements are invented (i.e. creatively created, such as the verbal designation for a Google trademark that did not exist before) combinations, which are of fantastic nature as related to the goods and services for which the trademark is registered. Therefore, here the names of Russian cities are not considered to be the non-protectable elements of corresponding trademarks and, consequently, they are subject to all exclusive rights of the owner.

No Right to Name

If during the review of FIFA’s applications Rospatent applied the usual practice and recognized the city names as non-protectable elements, such problems would not exist. But now we find ourselves in a sticky situation. Because of the trademarks registration no one has the right to use such designation as, for example, ‘Yekaterinburg 2018’ or ‘Saransk 2018’ for the purpose of organization of any sporting or cultural and educational activities without FIFA’s explicit permission.

And the events may have nothing to do with football at all. From now on the use of city name with indication of a year is prohibited with regard to many services. In 2018 in 11 Russian cities it is only FIFA which has the right to use the city name and year when organizing cultural events, providing services related to education and educational process, holding gaming tournaments and even beauty contests.

The violators may face sanctions, namely, the withdrawal of trademarked goods and payment of compensation in the amount of 10 000 to 5 million rubles to the benefit of FIFA. Hence, the companies that will, for example, organize the Moscow City Day in September 2018 need to be very careful not to obtain the FIFA’s legitimate demand to stop using the trademark. And it would even be better to abandon the already familiar symbols and not to pronounce ‘Moscow 2018’ in connection with the holiday.

The current situation is the result of inattention, rather than the evil intent. It is unlikely that FIFA really wanted to appropriate the names of Russian cities. The federation’s patent attorneys in Russia simply overacted, and Rospatent was insufficiently attentive when reviewing their applications before registering such trademarks. And now we can only hope that FIFA will not misuse the possibilities provided by Rospatent.

 
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