FIFA against Puma: who wins the cup in the trademark dispute?

On April 6, 2022, the Swiss Supreme Court made a final decision in the dispute between the Fédération Internationale de Football Association (the “FIFA” or “Plaintiff”) and the German sporting goods company Puma SE (the “Puma” or “Defendant”).

Originally, FIFA was a rightsholder of the following denominative/figurative trademarks: “WORLD CUP 2022”, “WORLD CUP QATAR 2022”. In 2018 Puma submitted for registration two denominative trademarks – “PUMA WORLD CUP QATAR 2022” and “PUMA WORLD CUP 2022”. As a lawful rightsholder of the previously registered trademarks, which might be confusingly similar those owned by Puma, FIFA has filed a lawsuit to cancel them.

FIFA, as the plaintiff, partially won this case. The Swiss Supreme court held the following:

> Puma’s denominative trademarks “PUMA WORLD CUP 2022”, “PUMA WORLD CUP QATAR 2022” can be interpreted by Swiss buyers of sporting goods as a direct reference to the 2022 FIFA World Cup, organized by FIFA in Qatar. Moreover, no other world championships is currently taking place in Qatar in 2022. Thus, taking into account the high level of public interest regarding this sport event, the average consumer will highly likely perceive these trademarks as referring to the 2022 FIFA World Cup.

> The combination of the elements in the mentioned trademarks presumes that the respectively marked products – in particular, sport goods – originated from a company which is highly likely to be a sponsor of the respective sport event. Even though Puma claimed that it acts like a sponsor of particular football players participating in the championship, the court stated that there is no connection between Puma and the 2022 FIFA World Cup, as Puma was not a direct sponsor of 2022 FIFA World Cup.

> Considering the above, Puma’s denominative trademarks “PUMA WORLD CUP 2022” and “PUMA WORLD CUP QATAR 2022” may mislead Swiss consumers into thinking that they are “event marks” of 2022 FIFA World Cup in Qatar, which is objectively false.

At the same time, FIFA partially lost the mentioned case because of the counterclaim filed by Puma. The Swiss Supreme Court concluded that the mentioned FIFA’s trademarks were invalid due to the following reasons:

> The FIFA’s trademarks “WORLD CUP 2022” and “WORLD CUP QATAR 2022”, must meet all the prescribed legal requirements in trademark law, including high level of distinctiveness, in particular, regarding the person responsible for organizing and holding the event.

> The mentioned trademarks directly refer to the sport event itself, while at the same time there is no evident connection with any organizer. Moreover, a sport ball as a graphic element does not add any distinctiveness, as it also refers to the sport, that is the subject of the discussed event.> Thus, the FIFA’s trademarks are descriptive as to the sport event itself as well as to commercializing respective kind of sport products, as they do not show any connection with the person who is hosting such event and/or presenting respective products.

As a result of this dispute, the Swiss Federal Institute of Intellectual Property will have to reconsider its approach towards registration of the event trademarks taking into consideration the position of the Swiss Supreme Court in this matter.