In addition to the recent enactment of Law No. (10) of 2021 regarding the Measures for Hosting the FIFA World Cup Qatar 2022, on 29th July 2021, His Highness the Amir Sheikh Tamim bin Hamad Al Thani, enacted Law No. (11) of 2021 regarding the Protection of Trademarks, Copyrights and Neighboring Rights of Fédération Internationale de Football Association (“FIFA”) (the “FIFA IP Law”) in a significant effort by Qatar to protect the substantial investments made by the State, FIFA and its commercial partners.
WHAT SHOULD YOU KNOW ABOUT THE FIFA IP LAW?
The FIFA IP Law governs the registration of all FIFA IP rights including FIFA Trademarks and FIFA Copyrights and Neighboring Rights. FIFA Trademarks are defined to be all trademarks belonging to FIFA in relation to the Tournaments organized by FIFA and hosted by the State of Qatar until the conclusion of the FIFA World Cup Qatar 2022 even if not registered in the State of Qatar. The Law applies in relation to the FIFA World Cup Qatar 2022 and any FIFA tournaments hosted by Qatar before or in 2022.
THE REGISTRATION PROCESSES
The registration of all FIFA rights shall take place either by FIFA directly or through an authorized agent. FIFA is entitled to submit an inquiry request on whether a trademark, copyright and neighboring right has already been registered or whether an application for its registration has been submitted. The Designated Office at the Ministry of Commerce and Industry (“MOCI”) must notify FIFA of the inquiry findings withing three days.
The Designated Office must issue a decision regarding the applications made by FIFA for the registration of FIFA Trademarks within 15 days from the date of submitting the application. Moreover, the Designated Office shall not reject the registration request made by FIFA unless the right trademark in question has already been registered in the State of Qatar. In this case, FIFA has the right to file a grievance before the Committee, and the decision must be issued by the Committee within fifteen days. The Committee is defined to mean the Committee established in accordance with the provision of Article (13) of the Law No. (9) of 2002 regulating Trademarks, Trade Indications, Trade Names, Geographical Indications and Industrial Designs and Templates (“Trademarks Law”).
Once a decision is issued by the Designated Office approving the registration or a decision is issued in favor of FIFA pursuant to a grievance filed in this respect, the Designated Office shall take the necessary steps to finalize the registration and the publication of such registration in the newspapers.
CHALLENGES TO FIFA’S REGISTRATION
Any concerned party may submit a written notice challenging FIFA’s registration to the Designated Office within fifteen days of the publication of the registration outlining its reasons behind the challenge
THE PROTECTION AFFORDED TO FIFA
The FIFA IP Law refers to the notability of FIFA Trademarks which means that it is protected regardless of whether it is registered in Qatar as long as it’s are protected in any member country to the Paris Convention for the Protection of Industrial Property which Qatar is a party to pursuant to Decree No. (31) of the year 2001. Such protection is afforded regardless of whether the goods or services of the third-party trademark are identical or similar to the goods and services of the FIFA Trademarks.
In this respect, FIFA IP Law refers expressly to the prohibition mentioned in Article 8.8 of the Trademarks Law, which prohibits the registration of signs which are identical or confusingly similar to the public, to a mark already registered or for which an application was filed by a third-party for identical or similar goods or services, or signs that are widely famous. Therefore, the prohibition in Article 8.8 of the Trademarks Law applies to any third-party trademarks that are identical or similar to any translation or transliterations of the FIFA Trademarks, or to any substantial part thereof.
FIFA has the rights to challenge the registration applications of third-party trademarks by submitting a request to the Designated Office. The Designated Office must notify the third-party with the challenge withing fifteen days. The third-party applicant has fifteen days from the date of notification by the Designated Office to submit a written response to the challenge, otherwise the application shall be deemed waived.
The Designated Office must issue a decision on FIFA’s challenge within ten days of receipt of the response to the challenge, or the laps of the required period for the third- party applicant to submit a response.
REGISTRATION OF LICENSING AGREEMENTS
The FIFA IP Law allows FIFA to submit an application to register any trademark license agreement in the Register. The registration must be completed within 15 days of the date of receipt of the application. Notably, the license agreement must only be in writing and is not subject to any additional requirements. Further, FIFA is permitted submit license agreements containing constraining commercial provisions.
EXCEPTIONS AND EXEMPTIONS AFFORDED TO FIFA
The FIFA IP Law provides an exception to FIFA from submitting a written statement in accordance with article 45(5) of the Law No. (7) of the year 2002 on the Protection of Copyright and Neighbouring Rights (“Copyright Law”), which otherwise requires the applicant to file the following : (i) the name of the author or owner of Neighbouring Rights; (ii) the subject matter of the work or subject matter of the neighbouring right; (iii) two copies of the work or the subject matter of the neighbouring right; (iv) a comprehensive statement of the specifications of the work or the subject matter of the neighbouring right; and (v) a written statement by the authors of the ownership of a work or any neighbouring right and rights conferred on them.
Further, FIFA is exempt from any fees associated with the registration of trademarks, deposit of works, audio recordings, performances of performers and its radio broadcasts.
Should you have any questions regarding FIFA IP Law, please do feel free to contact us.
Salman Al-Ansari Sonia Barber Khadeja Al-Zarraa
Partner Senior Of Counsel Senior Associate
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