Lisa Desjardins (Lisa): You’re listening to Canadian IP Voices, a podcast where we talk intellectual property with a range of professionals and stakeholders across Canada and abroad. Whether you are an entrepreneur, artist, inventor or just curious, you will learn about some of the real problems and get real solutions for how trademarks, patents, copyrights, industrial designs and trade secrets work in real life.I’m Lisa Desjardins and I’m your host.
The views and opinions expressed in this podcast are those of the individual podcasters and do not necessarily reflect the official policy or position of the Canadian Intellectual Property Office.
You have probably heard about FIFA and the FIFA World Cup, but have you ever thought about the fact that intellectual property is the foundation of the FIFA commercial program? Commercial affiliates or sponsors will only invest in the FIFA events and activities if they're provided with the exclusive use of the I.P. So, imagine, if anyone was free to use the FIFA brand, the mascot, images, the intellectual property, then there wouldn't be a reason to become a sponsor. This would obviously ultimately result in the FIFA not being able to secure the funding for its events and to develop the game globally.
So, protecting and managing the FIFA brand is extremely important. To learn more, we're meeting with Julie Jones, the group leader for I.P. registration at the FIFA's head office in Switzerland, as well as Raed AlHout, FIFA Brand Protection Council for the Middle East and North Africa region.
Julie, I'll start with you. Welcome to the podcast. It is such a pleasure to have you in our podcast!
Julie Jones: Hi Lisa, really happy to be here. Thank you for having us.
Lisa: The FIFA brand is enormous and we're recording this right when the FIFA Cup is happening. This is really a fun topic for us to discuss and a very important one that I think that actually small to medium enterprises have something to learn from. So, you're the group leader for the I.P. registration group and develop the I.P. strategy for the FIFA brand. Can you tell us a little bit about yourself and the kind of work that you do at FIFA?
Julie: Yes, sure. So I won't go maybe too far back, but something maybe important to know. So, I studied law in France and intellectual property there and I qualified as a trademark attorney and I moved to Switzerland a bit more than 15 years ago now. I worked for a pharmaceutical company, in the energy industry and I joined FIFA a bit more than a year ago, where I'm responsible for the I.P. registration team and I lead a group of 3 paralegals.
Lisa: Can you tell us a little bit about the portfolio at FIFA, what are the main assets and how they are created and protected?
Julie: Yes, the trademark portfolio's main assets are trademarks followed by copyright. We have as well some designs. The size of the portfolio always a bit interesting to know to put things in perspective. So it is 12,000 titles we are looking after. And for the creation of the assets for the competition are made in-house sometimes by our brand marketing team, but also we are working with design agencies. And once they create this asset and also during the process of the creation of the asset, they are in touch with us, in contact with us and we guide them through all the process. We give legal opinion on the way, and then we decide whether we'll go via I.P. registration program or whether we'll use the asset without a registration, whether we rely on copyright. So basically we decide on the strategy on the way depending how we want to create value, how the brand is important for FIFA and for the competitions.
Lisa: So you're an important contributor to FIFA's I.P. strategy. For someone who doesn't know anything about I.P. strategy, but just knows a little bit about brands and design, what does working with an I.P. strategy actually mean?
Julie: I think you need to work very much in advance in the process of the development of a trademark. So what you need to do first, very first step is to do a prior trademark search just to make sure that you are not infringing any third-party rights. And then you need to decide once this is available and you think it is a good name, "What I'm going to file. Would that be just a word mark? Would that be a device mark? Would that be a word and device mark? Will I do the filing in colour, black and white?" And I think that all of that will depend on the kind of use that you want to do with this trademark. Is it a use long term? What kind of product and services would you like to cover? So you need to take all of that into account at the time of the filing and once you've filed, it's not over. It's the beginning of a process to register your trademark because it would be examined by different trademark offices. And you will receive what we call provisional refusal, and you can answer to this refusal to overcome them, but you need to develop an argumentation and certainly not meet the deadlines by which your answer is due. And after that, your trademark will be published, and the third party can file opposition against your trademark. That's another thing you need to pay attention to and to make sure that your trademark goes through registration. You will need you to answer to this opposition. And once you have this registration, then it's not over. You need to make sure that you will defend your rights, put in place a watch service and receive watch notice where you will see "oh, this filing is quite close to mine, maybe I will oppose" and would be your turn to oppose and to enforce your rights. And also check the market, you know, monitor the market because some people will not file a trademark, but they're going to use something that is possibly identical or similar to your own trademark. So watch the market. And also use your trademark and keep evidence that you are using your trademark in order to avoid facing a cancellation for non-use for instance. And after that once you have a bit of time in the market, but not too long, you have 6 months after the first filing usually to extend your trademark in other countries. So make sure you don't miss this deadline if you want to go beyond your borders. So yeah, I think it's a lot to think when we speak about I.P. strategy and timing is really crucial.
Lisa: It's great advice, and I took a peek at FIFA's various I.P. assets and I could see that they're created way in advance, so coming in early makes sense, it really does. If you met an entrepreneur on the street and they don't know a whole lot about I.P., what kind of main considerations would you share with that person?
Julie: Yeah, I think budget can be a bit scary, but is a key to have a look at. And protecting intellectual property, it is certainly a cost. So be mindful of your budget. I think, file only in countries where you intend to use a trademark now or in the near future, and only for goods and services of your interest. So I think there is no need to go wild to ensure an efficient protection. But you can have good protection at a reasonable cost if you focus on your budget. I would say treat your I.P. as an important asset to get right straight at the beginning. Don't come too late. Don't hesitate to get advice early, as soon as you have an idea, and then with a good protection it can be the most valuable asset for your company in the future. And as I've said earlier, timing is of essence. Just to give you an example, at FIFA, for us, FIFA World Cup 2022 is almost over for my team, and we are already working on World Cup 2026. We are really excited because it's coming to Canada. So we are already working on that.
Lisa: That's very good advice. And 2026, that's 4 years away. So that gives us a good hint as to what strategy is all about and the importance of timing.
So Julie has talked about how the FIFA brand is protected and some of the important considerations that are also applicable to other companies with a brand. So there's a lot of good lessons learned shared in there. Thank you for that Julie, that's excellent. We'll also explore the commercial side of managing the brand and Raed, you are FIFA's Brand Protection Council for the Middle East and North Africa region and responsible for making sure that the FIFA brand is used the way it is intended in this region. And at the moment you're in Qatar, where the Cup is played. Raed, welcome to the podcast.
Raed AlHout: Thank you, Lisa. It's a pleasure to be with you in this episode. Yes, I'm in the middle of operations at Doha, Qatar, and I'm happy to contribute to this podcast.
Lisa: This is excellent. So you're in Qatar. Can you tell us a little bit about yourself and the kind of work that you're doing there?
Raed: Sure, I started my career in intellectual property 15 years ago. I started in the registration side of I.P. And then I moved to enforcement which is brand protection. My last work was with the USPTO, United States Patent and Trademark Office, I was working at I.P. attaché office at the U.S. embassy in Kuwait, where we covered MENA region, Middle East and North Africa countries. Our main role was to support U.S. companies to protect their rights in the Middle East and North Africa, and then I moved to work with FIFA in 2020. And now we are 3 in the team, and we will be mostly 25 close to the operations distributed among the 8 stadiums and the FIFA Fan Festival to support and protect our rights.
Lisa: Fantastic. Now, Qatar is an important country for the FIFA Cup, but it's not a very big country and I could imagine such an important event and such a big brand creates a bit of a challenge I would imagine. And I know that in Qatar there's the FIFA I.P. law. I.P. law 10 and 11 that have been implemented specifically for the FIFA Cup. Can you explain a little bit about how the brand is protected in Qatar?
Raed: Sure! Actually, last year, 2021, we issued 2 laws in Qatar. The first one is law number 10 for 2021, which related to measures of hosting The World Cup, FIFA Qatar 2022. The law has many articles, but part of these articles concern the commercial rights of FIFA intellectual property, which is mainly the brands, the official name, the mascot, all of these rights were included in this law. In addition to that, we have a law number 11 for 2021, which related to expediting the registration procedures for our trademarks. Further to the law number 10 for 2021, we have also filled the gaps, that is, in the current legislative regime which for example, unfair competition laws was not covered properly, which to fit FIFA's needs in this tournament. In addition to that, there's a commercial restriction area and this law, which means any commercial activities that are happening close to the stadiums, FIFA has to approve it before the establishment of this activity. In addition to that, we also shed the light on the domain name, the conflict between trademark and domain name as well as the use of the tickets as part of promotional campaign. This is an exclusive rights for FIFA and any third parties, especially non-authorized parties cannot use tickets as part of their promotional campaign.
Lisa: Lots of important supportive legislation in Qatar. Very interesting indeed. And obviously there's a lot of activities that you'd have to embark on as you protect the brand. What is FIFA's approach to brand protection?
Raed: Actually our approach was quite different than, I would say, any other countries. We adopted an approach which is: we do our due diligence first to the cases and when we feel the case is minimal and does not seem to be a huge infringement, we tend to call the infringer, give them the justification that "we know that what you are doing is not legal" and there's a law number 10 for 2021 which prevents such kind of activities. And there is a huge lack of awareness when it comes to I.P. in the region, specifically in Qatar. So our initial approach after we do our due diligence is to call the companies telling them, "look, this is illegal according to the law" and 99% of the cases, if not 100%, are solved amicably within 24 hours. So we don't have any cases in the court in Qatar and most of the cases are solved by a call.
We have noticed a lack of awareness when it comes to I.P. in the region. Based on that, we decided to follow a proactive approach by raising the awareness before these companies and individuals before they start using our I.P. without authorization. We started to deliver training for the officials in the region such as Qatar, Saudi Arabia, Morocco, Algeria and Jordan. After that, we published awareness messages using social media platforms and instead of traditional newspapers, where we used soft language instead of threatening language for individuals and companies in the region. Also, we tailored the message based on the audience which means, in North African countries, we published the awareness messages in both Arabic and French. For example, in Egypt we published our awareness message using Facebook platforms. In other countries like Saudi Arabia, we used Twitter. For example, Kuwait, we use Instagram. So we use the most effective tool to raise the awareness when it comes to I.P. awareness. In addition to that, since Qatar is the host country we run a massive campaign in cooperation with the ministries and Qatar, such as Minister of Commerce, Minister of Interior and Minister of Culture, where we raised the awareness about I.P. as well as we delivered awareness campaigns to the malls, hotels, travel agencies just to be more proactive when it comes to I.P. and not being reactive when they just used our I.P. without authorization. And we have maybe to spend more time and more money to stop them.
Lisa: Excellent. I took a peek and I saw FIFA has published actually really excellent guidelines for the use of FIFA's I.P. and in there we can really learn a whole lot, not only about the I.P. assets, but also about the affiliated partners. I was wondering can you explain how the FIFA assets are the basis of these licensing agreements? Because I think for small and medium enterprises it's a good guide to read to get an understanding for the monetization through licensing.
Raed: Absolutely. Actually, the I.P. guidelines was created to allow third party to enjoy and celebrate the tournament without infringing FIFA's rights. So we used, as you can see, very simplified words for non-I.P., let's say people just for them to try to understand the document. So we have the I.P. guidelines in 6 languages: Arabic, English, French, Chinese, Spanish and German. So we try to cover most of the languages. In addition to that we use a very simplified language. For example, companies could use generic terms to celebrate the tournament without infringing FIFA's rights. For example countries' flags. Football generic terms, you know? So, all of these are permitted to be used. And this is meant to be included in the I.P. guidelines and this is one of the main goals. We created and published these guidelines on fifa.com.
Lisa: Yeah, the guideline contains really important information about the authorized use of FIFA brands.
What about practically? Can you tell us a little bit about the kind of work that is involved in enforcing such a large portfolio of I.P.?
Raed: Sure, actually as you mentioned, we cover Middle Eastern, North African countries and we have really big countries like Egypt, Saudi Arabia, United Arab Emirates and most of the shipments that are coming to Middle East are coming through Dubai as a hub. So we do record our trademarks in the customs as a first step, after of course trademark protection of the I.P. offices, we do a further step of protection which has protected our trademark before customs. So whenever there is a shipment coming to the region, customs will notify us "we received the shipments that contain FIFA I.P., could you please verify the authenticity of this shipment?" And this when it comes to counterfeit goods, because customs are the first lines of a protection, and when it comes to unauthorized use we have law firms in the region, in each region, helps us to monitor the market, monitor unauthorized use as well, in addition to enforcing any unauthorized activities that are happening in the region.
Lisa: That's excellent. I know Canada has a similar program with the customs where you know anyone with a registered trademark or copyright can request that kind of assistance. Very, very important and interesting information and thank you so much. Finally, if you had the opportunity to teach an entrepreneur a few I.P. tricks, what would you tell them?
Raed: Well, that's a very good question. Our region's adopting first to file, not first to use, so first advice is just go and file. Protect your I.P. because we are adopting a first-to-file basis, so this is first thing. Second thing: don't consider I.P. as an expense. It might be the main assets you have after your company growing. In addition to that, I would like to add that entrepreneurs could use I.P. as a mean to source money which means to use it as I.P. collateral on further stages.
Lisa: Fabulous. Raed and Julie, it's been such a pleasure to have you on the podcast.
Thank you so much for sharing insights and the importance of managing a brand well ahead of a big event. Thank you so much.
Raed: Thank you.
Julie: Thank you, Lisa.
Lisa: You've listened to Canadian I.P. voices where we talk intellectual property. In this episode we heard from Julie Jones and Raed AlHout, who have the important task of managing and protecting FIFA's impressive portfolio of over 12,000 I.P. assets. Julie explained the importance of planning ahead early when it comes to I.P. FIFA is already protecting their I.P. assets for the Cup in Canada 2026. Raed described the kind of work involved in protecting the brand from unauthorized use which is at large an educational effort supported by firm legislation and active monitoring.
If you're curious to read FIFA's I.P. guidelines that describe their I.P. assets and how these can be used, open the description to this episode to find a link to the document.