In April 2019 an article written by me was published in the Newsletter of Abogados.com.ar in which I highlighted that FIFA, the International Olympic Committee and other organizers of “mega events” try to prevent, especially shortly before their fulfillment and during their development, those who are not their official sponsors, from carrying out marketing actions that mention, even indirectly or merely evoke the “event”.
I said then that it seemed that said organizers would like to monopolize, at least for a while now football, then the Olympic sports, now other activities, in favor of the sponsors, to which they grant certain exclusivity rights.
The issue becomes topical because between next November 21 and December 18 the FIFA® World Cup Qatar 2022® will take place. Especially bearing in mind that, in accordance with the information published in February 2022 by newspapers of national circulation, the country other than its organizer, claiming more tickets to attend this “mega event”, was, until then, the Argentine Republic.
As from the standpoint of the FIFA® World Cup organizer’s economic interest, the intent to exclusively rule the event could seem reasonable, because it tends to protect their earnings, partly derived from the amounts paid by the sponsors to obtain the nature thereof.
It seems clear to me that when the behaviors that FIFA intends to prevent consist in the use of its trademarks – or other intellectual properties – without its authorization, in cases in which such facts is punished by the Trademarks and Designations Act, the intent of said Federation would be lawful.
Of course, it would be lawful also if the questioned marketing actions or advertisements were misleading, under the terms of section 11 of the – Emergency – Executive Order 274/2019, of Fair Commercial Practices or if they constitute any event of unfair competition, contrary to honest commercial practices, of those set forth in said executive order and in the regulation of section 10 bis of the Paris Convention.
But, aside from said cases, I believe that if FIFA intends to prevent those who are not its sponsors from the performance of marketing actions in which the event is mentioned, even indirectly or if it is merely evoked, this fact is not in accordance with the law.
With the stated purpose of offering to the interested parties information and instructions on the intellectual property of FIFA and other commercial rights related to the FIFA® World Cup Qatar 2022®, the FIFA has issued the so-called “Guidelines of FIFA on intellectual property” (the “Guidelines”).
Section 2 of the Guidelines, under the title “OFFICIAL INTELLECTUAL PROPERTY”, informs that FIFA has created a range of trademark assets, including logotypes, words, titles, symbols and other elements related to the tournament and with FIFA, which are called by “official intellectual property” and that the holders of FIFA’s rights shall be the only parties authorized to use the official intellectual property with commercial purposes.
The protection of the FIFA’s commercial rights, including the official intellectual property, is essential to organize the tournament, as stated in section 3. of the Guidelines, adding next that “FIFA requests to non-members to respect the FIFA’s rights and to carry out their activities without creating any commercial tie with this tournament.”
However, FIFA acknowledges in section 5. of the Guidelines, that “There are lawful manners to promote and take advantage of the interest in the tournament without using the trademarks and official intellectual property nor creating unauthorized commercial ties with it.”
But it warns that “When a company appears to be associated to FIFA or the tournament it shall be considered that unlawful commercial ties have been set …., for example, when using the elements subject to the official intellectual property rights or giving the impression that the company is the holder of rights (i.e., the sponsor or licensee).” (Emphasis added).
The Guidelines, in section “7. EXAMPLES OF USE”, present, by way of illustration, “situations” that, as stated, have been designed to help entities and persons whose intention is to avoid unauthorized ties with the tournament.
When said section 7 mentions “COMMERCIAL ADVERTISING” it only says that:
“The use of official intellectual property in commercial advertising shall be avoided, since probably it may set unauthorized ties.” (Emphasis added).
Taking into account that, as evidenced by the Guidelines, FIFA would be the owner, among many others, of the following word trademarks – in different languages:
(i) Qatar 2022®,
(ii) World Championship®,
(iii) World Cup®,
(iv) World Cup 2022®
(v) World Cup FIFA®,
(vi) World Cup FIFA® Qatar 2022® and
And considering the warnings mentioned above, it would seem that FIFA intends to forbid, for example, that a trademark of television sets which is not the sponsor of said Federation invite in its advertisements to see – with the best image – the matches of the “World Cup” or “Qatar 2022”.
Or that an airline other than “Qatar Airways” – the sponsor of the event – publicizes its flights to the cities where the “World Cup” or “Qatar 2022” will be developed. For instance, Aerolíneas Argentinas could not say, “the best prices to get to the World Cup.”
In the preceding examples – and in many others, of course – my opinion is that the use in advertising of word trademarks registered by the FIFA to refer to the World Cup® of Qatar 2022® must not be curtailed, because it does not constitute an improper use of another’s trademark and – neither – an act of unfair competition.
In said sense, it seems appropriate to me to recall the judgment rendered by Panel II of the National Appellate Court having jurisdiction in Civil and Commercial Federal Matters on August 9, 2017, rendered in the case captioned “Federation Internationale de Football Association v. Cencosud S.A., Suspension of trademark use (Cause n° 6191/2013)”, that FIFA lost in the lower and appellate courts, having to pay the legal costs.
The lawsuit was filed by FIFA in 2013 as a result of the execution by Cencosud S.A. of a sales promotion for its credit card “Cencosud” in which it offered as a prize the travelling and accommodation expenses of four persons to Brazil to be present at the first two matches that the Argentine National Team would play, initially mentioning in the advertising that the trip was to be present at the matches of the World Cup “BRASIL 2014”®.
As evidenced by the judgment rendered by Panel II, the FIFA filed a complaint against Cencosud S.A. so as, in what concerns us here, to obtain the suspension of the use of the trademark “BRASIL 2014”, Nr. 2,256,548, of class 36 and to order the suspension of the offer of tickets to enter the stadiums in which the matches corresponding to the World Cup of FIFA to be held in Brazil 2014 would be developed.
The defendant pleaded in its defense that the promotion was made trying to increase the purchases with the credit card “Cencosud”; it expressly acknowledged that the promotion offered a prize to go to “BRASIL 2014” and likewise that it modified afterwards the promotional guidelines and did no longer mention “BRASIL 2014” when it received a document letter (Registered letter with acknowledgement of receipt and receipt return [issued in three copies, the original of which is for the addressee and the other two copies are one for the sender and one for the post office -all of which is deemed as evidence-) from the FIFA, to avoid what it called as unreasonable action of the plaintiff, because it understood that it had neither improperly used said trademark nor had I made a promotion that violated any regulation at all.
Cencosud’s defense highlighted that the improper use appears when someone uses another’s trademark to offer or sell products or services with said trademark or a confusing one. But that such was not the case, because it had not used “BRASIL 2014” to offer or distinguish the services protected in class 36.
Said defense specified also that when someone says that he/she sells any product or that he/she repairs any device or that sells spare parts or that its product contains certain raw material and mentions a trademark, it does it pursuant to the law, because it is a lawful use of another’s trademark.
He argued that BRASIL 2014 is one of the names with which the Football World Cup to be held in Brazil in 2014, was called and known; therefore when referring to the tickets for BRASIL 2014 no trademark whatsoever had been improperly used and he stressed that Cencosud offered a prize in the promotion that partly consisted in tickets for matches of the event “BRASIL 2014”; that is to say, it offered what is known as belonging to another one, just like if the prized had been a Ford car or a trip to Disney World.
Like the Lower Court Judge, the Appellate Court examined the arguments of Cencosud’s defense and consequently dismissed FIFA’s complaint in its entirety, ordering FIFA to pay the legal costs.
In what concerns us here, as regards the use in advertising of the promotional action of the trademark “BRASIL 2014”, the Appellate Court stated that:
“… reality is that the promotion clearly referred to the Football World Cup seated in Brazil in 2014, and that “BRASIL 2014” is a trademark owned by the plaintiff, a public and widely known fact that the defendant could not ignore at such time, in which most of the Argentine public, waited with special interest and passion. However, I think that the trademark was not used with the purpose of identifying a product or to seek the confusion of consumers … I consider that it was a lawful use of the phrase in question so as to promote a product and that to such end the attraction of consumers was sought through the promise of an effective prize.” (Emphasis added).
And he added that:
“I observe that the plaintiff applies for the suspension of use of all the trademarks and distinctive signs of FIFA and the truth is that it has registered only the set of trademarks “BRASIL 2014”, since the other signs used by the other party in the graphics show a woman with a whistle or a credit card simulating a penalty card in the playing field, therefore, to order the defendant to suspend the use of football references in its advertising strategies would imply to acknowledge to FIFA a kind of football monopoly and any statement related to said sport, what proves to be clearly unsuitable.” (Emphasis added).
I fully agree with the judgment briefly discussed.
Because, as I said above, while the Trademarks and Designations Act is not violated as well as the regulations that forbid misleading advertising or unfair competition, the evocation of the event, its indirect mention and in certain circumstances – just like, for example, in the case “Federation Internationale de Football Association v. Cencosud S.A., Suspension of trademark use (Case n° 6191/2013)” – the use of trademarks registered by the organizers of the “event”, are behaviors that do not deserve reproach under the regulations n force in the Argentine Republic.
I believe, in addition, that other marketing actions that FIFA has questioned at the time of other World Cups trying to forbid the advertisers who are not the sponsors of the event to execute them, are not contrary to law either – provided that, of course, the advertising message is not misleading and they are not made constituting unfair competition -.
Just like, for example:
(i) Conducting draws or contests offering as a prize trips to Qatar,
(ii) The sponsorship of sports or recreational programs – or of any of their segments – in which the event is discussed or that are related to the same; and
(iii) The production of advertising in media during the broadcasting of the sports match or other activities that make-up the event.
None of these marketing actions, in my opinion, will make the public believe – again, provided that the advertising message is not misleading – that the trademark subject matter of the advertising is the sponsor of Qatar 2022 or of FIFA and it shall not cause error, deception or confusion on an alleged relationship between the sponsor and FIFA, as regards the World Cup.
Buenos Aires, February 23, 2022.
 “Advertising and mega events: Brief annotations on the so-called “Ambush Marketing”, published in the Newsletter of Abogados.com.ar on April 8, 2019.
 Jorge Otamendi, in his article “Marketing de emboscada. Ambush Marketing”, published in “La Ley” on September 6, 2011, says that: “The sponsor is the one who, in exchange of the payment of a price and with exclusivity in its line of business, may introduce itself to the world as sponsor of the event in question. Likewise, it shall be authorized to use the symbols and trademarks of the organizer and to make advertising (except in the Olympics), at the place where the event is developed. When the event is broadcasted on television, the sponsor will be benefited by the appearance of its trademark in so many places as viewers see the event.”
 Matías F. Noetinger says on the issue, in his work “Analysis of the different industrial property rights and image rights with respect to the football sphere” (Análisis de los diferentes derechos de propiedad industrial y de imagen con referencia al ámbito del fútbol): “And it was as from the past World Cup in Korea and Japan that FIFA began to take actions against the companies that directly or indirectly referred to said event and its distinctive signs, in their advertising campaigns. Before the World Cup, FIFA had already filed more than 500 complaints in 51 countries against companies that infringed its rights, successfully in 90% of the cases. In Argentina, FIFA filed more than fifty complaints applying for precautionary measures, attacking products that infringe its trademarks.”
 SECTION 11.- Misleading advertising. Any kind of presentation of advertising or propaganda that through inaccuracies or concealments may mislead, deceive or confuse as regards the features or properties, nature, origin, quality, purity, mix, quantity, use, price, commercialization conditions or production techniques of personal property, real property or services is forbidden.
 SECTION 9.- General clause. Every action or omission that, through improper means, affects the competitive position of a person or the proper operation of competitive process constitutes an unfair competition act.
SECTION 10.- Particular events. The following are considered unfair competition acts:
a) Acts of deceit: Induce to mistake on the existence or nature, manufacturing or distribution method, main features, purity, mix, suitability for use, quality, quantity, price, sale or purchase conditions, availability, results that may be expected from its use and, in general, on the characteristics, benefits or conditions corresponding to the goods and services.
b) Acts of confusion: To mislead with respect to the business origin of the activity, the establishment, own assets or services, so that it is considered that they have an origin other than the one corresponding to them.
c) Violation of regulations: To rely on a significant advantage derived from competing through nonperformance of legal regulations.
d) Abuse of an economic dependency situation: Make use of an economic dependency situation of a company, customer or supplier which does not have an equivalent alternative to practice its activity in the market. This situation will be assumed when a supplier, in addition to the usual discounts or conditions, should regularly grant to its customer other additional advantages that are not granted to similar buyers.
e) Improper obtention of commercial conditions: The obtention, under the threat to break up the business relationships, prices, payment terms, sales modalities, payment of additional charges and other conditions not contained in the agreed upon agreement or without reasons based on trade practices and customs shall be considered unfair.
f) Below cost selling practice: If the below manufacturing cost selling practice or below the acquisition price, is part of a strategy which purpose is to hamper the entry into the market or to eliminate a competitor from the market.
g) Improper use of another party’s good standing: To perform acts that improperly take advantage of the image, credit, fame, business or professional reputation or good standing belonging to another one or leading to the confusion of the own property, services, activities, distinctive signs or establishments with those of another party.
h) Acts of unfair imitation: The imitation of property and services or business initiatives shall be considered unfair when it leads to confusion with respect to the origin of the property or services or entails an improper use of another’s reputation or effort.
i) Acts of denigration: To lessen the image, credit, fame, reputation or good standing of another competitor, unless the assertions are accurate, relevant and true.
j) Violation of secrets: To disclose or use, without the owner’s authorization, business secrets other than those to which it had access, lawfully, but with the duty of confidentiality, or unlawfully. To such end, the acquisition of secrets through spying or analogous procedures shall be considered unfair notwithstanding the penalties that other regulations may set forth.
Violation must have the purpose of obtaining its own or a third party’s profit, or to damage the holder of the secret.
For the purposes hereof, the approval of the registration or of the authorization of commercialization set forth under the protection of the proceedings to approve similar products provided for in section 5th of Act N° 24,766, by the local administrative authority, shall not be considered an unfair competition act. k) Incitement to contractual infringement: To Incite employees, suppliers, customers or other obligors to infringe contractual obligations undertaken with a competitor.
l) Acts of discrimination: The discriminatory treatment of buyers when the seller or distributor had published a price list, unless there is a justified cause.
m) Comparative advertising infringing the provisions set forth in section 15.
The preceding list is restrictive for the purposes of the imposition of penalties by the Enforcement Authority and illustrative for the filing of judicial actions by the affected parties, in which case the judge may also apply the general clause set forth in section 9th of this Executive Order for the events not expressly specified in this section.
 SECTION 10 BIS.- 1) The countries of the Union are obligated to ensure to the nationals of the countries of the Union an effective protection against unfair competition.
2) Every act of competition contrary to honest industrial or business practices constitutes an unfair competition act.
3) Particularly, the following should be forbidden:
1. Any act capable of creating confusion, by any means whatsoever, with respect to the establishment, the products or the industrial or business activity of a competitor;
2.False statements, in the practice of trade, that may discredit the establishment, the products or the industrial or commercial activity of a competitor;
3. Indications or statement which use, in the practice of trade may lead the public to mistake on the nature, manufacturing method, features, suitability for employment or the quantity of the products.
 On the date I wrote this article “Version 3.0” of the Guidelines, dated “November 2021 was in force”.
 The extraordinary appeal filed by FIFA was dismissed by the Honorable Court of Appeals, but an appeal on points of fact before the Supreme Court of Justice of the Nation could be pending resolution.
 Siempre que sus organizadores puedan obtener legítimamente entradas que aseguren a los ganadores el ingreso a los estadios o, en su caso, aclaren expresa y claramente que los viajes no incluyen entradas.