The FIFA v Metcash judgment

Darren has asked for my comments on the FIFA v Metcash judgment, handed down by Msimeki J on 1st October 2009, some 10 months after the matter was argued. As Darren knows, I had hoped for a different outcome – my personal opinion is that FIFA’s general attitude is that of a superbully – rewriting national laws at its own convenience, for its own advancement, and openly admitting to taking action against those who cannot afford to litigate.
But my academic opinion is more restrained. It is a pity the judgment took so long to appear, and one can only hope that Metcash does decide to appeal the decision, and that this delay does not make any appeal futile.
FIFA originally asked for relief on a number of grounds- trademark infringement, passing off, contravention of s9(d) of the Trade Practices Act, and finally, unlawful competition by contravening s15A of the Merchandise Marks Act. Only the last ground was argued; the other heads were ‘not necessarily abandoned’ but would appear more tenuous than generally admitted in FIFA press reports. (Of particular interest is the registered trade mark in the relevant class – a device mark for SOUTH AFRICA 2010 BID with a disclaimer of the words ‘SOUTH AFRICA’ and the numerals ‘2010’ separately and apart from the mark – matter not commonly included in any FIFA information pack!)
FIFA alleged a contravention of the Minster’s declaration that the 2010 Soccer World Cup was a ‘protected event’. Section 15A(2) provides that ‘for the period during which an event is protected, no person may use a trade mark in relation to such event in a manner which is calculated to achieve publicity for that trade mark and thereby to derive special promotional benefit from the event, without the prior authority of the organiser of such event’. It is possible that Metcash did contravene this provision, if it is interpreted widely, as Judge Msimeki did. But even if it was contravened, Metcash’s argument is that the provision is unconstitutional, offending against both freedom of expression and property rights. The applicant’s response, approved by the court, is that ‘s36 of the Constitution would allow and justify the limitation of the Respondent’s rights to freedom of expression or to the[eir] intellectual property if their use would deceive or confuse the public and end up jeopardising an event such as the soccer world cup and at the same time prejudicing the sponsors and the licensees of the event’ (p 17 judgment). He unfortunately gave no further consideration to the question of whether s15A is unconstitutional.
This is a pity. The limitations contained in s36 of the Constitution include the nature of the right (all holders of SA trade marks: here, a trade mark used from 2004, two years before the s15A prohibition commenced); the importance of the purpose of the limitation (for FIFA, through sponsors and licensees, to make money); the nature and extent of the limitation (4 ½ years absolute prohibition); the relation between the limitation and its purpose (there was a mere allegation that the staging of the event is in the public interest and no evidence was submitted that the organisers have created sufficient opportunities for small businesses and in particular those of the previously disadvantaged communities, in fact, media coverage suggests the contrary); and less restrictive means to achieve the purpose (no equivalent relief is available in terms of any other legislation or common law – the provision is extraordinarily wide and no equivalent relief is available in terms of any other legislation or common law – for example trade mark rights are much narrower in scope and the applicant’s registered trade mark does not give any such protection because of the disclaimers).
We can only hope that an appeal is noted and that a considered decision on the constitutionality of this, and similar future legislation, is forthcoming. Not to spoil the game, but because s15A appears to score 10(FIFA) -1(public interest).