Federal Court of Justice, Decision of 12 November 2009, I ZR 183/07, "World Cup Trademarks"

The Fédération Internationale de Football Association (FIFA) owns numerous trademarks in relation to the Football World Cups 2006 in Germany and 2010 in South Africa. Ferrero produces and sells the chocolate wafers "DUPLO" and "HANUTA". Since 1982, it had distributed free collectible stickers of the football players of the German national team with these chocolate wafers before and during the Football World Cups. The packaging showed logos bearing the letters "WM" (German abbreviation for World Cup), the year of the football event and other figurative elements. In order to protect these signs, Ferrero applied to register several trademarks which featured various word elements such as "WM 2010" or "2010" as well as figurative elements, e.g.:

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FIFA's trademarks

FIFA requested the cancellation of eight trademarks and the withdrawal of three further trademark applications claiming trademark infringement and unfair competition practice. It based its claims on its serial trademarks (WM + year) and on its work titles for "GERMANY 2006" and "SOUTH AFRICA 2010".[1] While the Regional Court of Hamburg granted FIFA's claims, the Court of Appeal Hamburg dismissed FIFA's claims.

On further appeal, the Federal Court of Justice said that there was no trademark infringement as there was no likelihood of confusion between FIFA's and Ferrero's trademarks. In this regard, the court also pointed out the limited scope of protection of FIFA's trademarks. The court further decided that FIFA could not base its claims on its work titles for "GERMANY 2006" and "SOUTH AFRICA 2010". With regard to the unfair competition claim, the court rejected FIFA's argument that Ferrero's trademarks deterred FIFA's world cup marketing because Ferrero's trademarks would not cause the relevant public to assume that Ferrero was an official FIFA sponsor of the World Cups. FIFA's basic constitutional right to exploit commercially the football tournaments it organizes did not extend to a monopoly right of exclusive commercial exploitation. As a result, the Federal Court of Justice dismissed FIFA's claims.