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Hindles’ IP insight into Euro 2024™
Although the group stage of Euro 2024™ ended tragically for Scotland on 23rd of June, our team at the Edinburgh office tried to forget the pain of defeat by turning its attention to another exciting pitch: Intellectual Property Law (IP) and its very special relationship with football.
Crossing over trade mark law, design law and patent law, the organisers of Euro 2024™ are not ready to easily concede the game. Their defence should hopefully prove stronger than that of the Scottish team…
In a rare interview, our attorneys Liz Lowe, Fiona Jones and Melissa Walden share their insights about the IP strategy necessary to manage a successful global event such as the Euros.
Q: Why has the UEFA registered trade marks in over 80 countries when Euro 2024™ is happening in Germany?
F&L: Trade marks are territorial rights; this means that they are only enforceable over the territory in which registration has been granted. However, in the case of Euro 2024™, the importance of the event far exceeds German borders. Indeed, people over the world are watching Euro 2024™ on TV, reading about it in the news, looking for highlights and purchasing related merchandise.
Given the global nature of Euro 2024™, and to make sure UEFA’s rights are protected to the greatest extent possible, it makes sense to seek protection worldwide, especially in countries in which football plays an important part, such as Brazil. There are ways to put widespread international protection in place quickly and cost-effectively, such as through the Madrid Protocol or, for EU countries, through the European Union trade mark.
Q: Why did the UEFA file trade mark applications as early as July 2018 in the EU and the UK when the competition only started in June 2024?
F&L: It is always advisible to plan ahead when it comes to protecting one’s IP assets, and especially ahead of any product launch. The Euros is a competition that happens at regular intervals, requiring considerable investment and logistics. Although the actual kick-off was in June 2024, the advertising of the event and the manufacture of the equipment and various event-related products, for instance, started much earlier.
There is no set timeline for trade mark registration, and too early is not always the answer either, as the trade mark may then become vulnerable to revocation for non-use after 3 or 5 years, depending on the territory. However, in the case of the Euros, it did make sense for the UEFA to register its trade marks early, given the nature of their task and the need to plan ahead.
Q: What is the point of UEFA having trade marks as similar as 'UEFA EURO 2024' and 'UEFA EURO 2024 GERMANY'?
F&L: These trade marks may seem similar, but it is worth noting that on the register the first one is a plain, unadorned text version, while the second one is more elaborate and serves as part of the logo for the tournament. As the protection is for the mark and the mark only, sometimes - notwithstanding the likelihood of confusion with similar trade marks - too many details may paradoxically mean a restriction of the protection. The second trade mark is registered in black and white which is a strategic choice since, in the EU, protection will cover the entire colour spectrum, rather than being limited to the colours of the version on the trade marks register.
Q: Why did the UEFA apply for classes which have nothing to do with football, such as ‘colouring and drawing books’ (class 16), ‘video games’ (class 28) and ‘telecommunication services’ (class 38) in its EU application?
F&L: The protection granted by registration is limited by the goods and services listed in the trade mark specification. When applying for registration, it is important to identify the goods and services which reflect the extent and nature of one’s business. With Euro 2024™, the UEFA obviously expects to sell products in the field of sportswear (class 25) and football gear (class 28), but merchandising is also an important business with a range of football-themed products intended to appeal to a different sector of the public such as kids, with colouring books and video games. An important source of revenue during the Euros is also the broadcasting of the game; a registration in class 38 thus allows the UEFA to be in a strong position to negotiate licensing agreements with TV companies.
Q: If the trade mark protection is that extensive, surely there was no need for UEFA to apply for design rights as well?
M: The variety of IP rights allows to protect different aspects of an event such as Euro 2024™. Design rights protect the visual appearance of a product. In the world of football, elements such as a football kit may be worth protecting: worn by the players on the pitch and in advertising campaigns, they are also very successfully sold to the fan base as merchandise. As one of the sportwear providers for the event, Adidas AG has for instance registered Scotland’s kit. The appearance of other iconic elements in a football tournament may be highly desirable, such as the Official Match Ball. Owned by Adidas AG, the FUSSBALLLIEBE™- a name protected as a trade mark in various countries - is also registered twice as a Registered Community Design on the EUIPO register, both in colour and in black/white.
Q: Why has the same design been registered twice for the FUSSBALLLIEBE™?
M: Both registrations work together to provide extensive protection of the design. The black and white registration provides a broad scope of protection encompassing the arrangement of the geometric shapes on the ball in any colour combination. Meanwhile, the colour registration, despite offering a narrower scope of protection with respect to the colours that are specified, has the potential to provide an additional and broader layer of protection with regard to the patterning if the colouring is closely copied. Adidas have therefore considered many angles of attack from opponents when it comes to these designs.
If I may add, this year, the inside of the ball may be even more important than its outside appearance due to the introduction of ground-breaking technologies, protected under patent law…
Q: How can there be a patent on a football?
M: With FUSSBALLLIEBE™, Adidas AG has designed a suspension system which is an improved way of providing a centre mass within the hollow shell of a ball (EP4299146). This invention allows for the inclusion of sensors in the pit of the ball which can, in turn, collect various data such as the position of the ball, its velocity and the points of impact. These data can be used to assist VAR (video-assistance referee) during a game, and to assess the performance of individual players.[1]
Q: There has been a dispute about this sensor technology just weeks before the launch of Euro 2024™. What was it about?
M: Yes, indeed! The UEFA might not have had a ball for its players to play with…
Just two months before the opening of the competition, a company initiated proceedings against the UEFA, arguing that the connected ball they were going to use for the tournament would infringe a pre-existing patent, consisting in a method and system for detecting an offside situation (EP1944067). Eleven days before the Euro 2024™ kick-off in Berlin, the Hamburg Local Division of the Unified Patent Court (UPC) rejected the claim. Interestingly, the company which claimed the infringement was a non-practising entity (NPE), also known as ‘trolls’. This fact, and the convenient opportunity presented by Euro 2024™, did not escape the referees (pardon, the judges!) who blew the whistle and handed a straight red card to the NPE.[2] Quite a swift pass of the ball from the UPC, which had only just celebrated its first anniversary!
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Looking at the IP strategy of some of the main actors of Euro 2024™, it is obvious that, benefitting from previous experience in the field along with considerable resources, they have established a well-oiled IP game plan.
Their IP playing style is marked by a robust and cautious defence which is in place from the very start of the game, and which keeps its shape under pressure. They tend to play wide on the IP pitch, relying on extensive trade mark and design rights to maintain optimal possession. And when intimidated by other players, they know how to keep their eye on the ball…