From designs and trademarks to LEGO® bricks — the IP behind the FIFA World Cup Trophy ™

With the FIFA World Cup™ tournament set to conclude this weekend, soccer fans around the globe are eagerly waiting to see whether Spain or Argentina will claim football’s ultimate prize and lift the FIFA World Cup™ Trophy.

The FIFA World Cup™ Trophy is a great example of how a multi-layered intellectual property (IP) strategy can be used to protect a valuable business asset. 

In Canada, FIFA has relied on both industrial design and trademark protection and this article looks at how these IP tools have been used to safeguard FIFA’s rights in the iconic trophy and maintain control over its commercial exploitation for decades. 

A New Business Asset

The trophy awarded to the winners of Sunday's match is actually the second FIFA World Cup trophy.

The original trophy, known as the Jules Rimet Trophy, was awarded permanently to Brazil after it won its third World Cup title in 1970. To replace the Jules Rimet Trophy, FIFA commissioned a new design competition and from the 53 submissions, the design created by Italian sculptor Silvio Gazzaniga was selected as the winner.

Gazzaniga’s design, which remains the current FIFA World Cup™ Trophy, depicts two human figures triumphantly lifting the Earth. Since its introduction in 1974, the trophy has become one of the most recognizable symbols in international sport.

Industrial Design Protection

FIFA initially protected the FIFA World Cup™ Trophy in Canada through an industrial design registration (Industrial Design No. 35236), fittingly titled TROPHY, which was registered on May 25, 1972.

In Canada, registered industrial designs protect the visual features of a finished article, including its shape, configuration, pattern, or ornamentation. Industrial design rights do not extend to functional or utilitarian features.

Although Canada provides a grace period allowing applicants to file an industrial design application within one year of disclosing a design publicly, a design must still be novel to be registrable. Industrial design rights are also limited in duration. In Canada, the term of protection is the later of 10 years from the registration date and 15 years from the filing date.

As a result, once an industrial design registration expires, as occurred with the FIFA World Cup™ Trophy, rights holders must look to other forms of intellectual property protection if they wish to continue protecting the commercial value of the underlying asset.

Trademark Protection

Recognizing the enduring value and distinctiveness of the trophy design, FIFA sought trademark protection in Canada after the industrial design registration expired.

In 2013, FIFA applied to register the FIFA World Cup™ Trophy as a two-dimensional design mark in association with a broad range of goods and services. The trademark ultimately proceeded to registration in 2019.

Trademark registration grants the owner the exclusive right to use a mark in connection with specified goods and services. Trademarks allow consumers to distinguish the goods and services of one trader from those of another. To be registrable, a trademark must be distinctive. Trademarks protection can extend beyond words and logos to include tastes, textures, sounds, colours, and in the case of the FIFA World Cup^TM Trophy, a design. 

While the term of a registered trademark is 10 years, unlike industrial design registrations, trademark registrations can be renewed indefinitely, provided the mark continues to function as a distinctive indicator of source.

From IP Protection to Commercialization

Intellectual property protection does more than prevent unauthorized use. It can also create valuable licensing opportunities.

For example, in the lead-up to this year’s tournament, soccer fans and/or brick enthusiasts alike may have noticed the LEGO® FIFA World Cup™ Official Trophy set on store shelves, allowing consumers to build their own version of the iconic trophy. Through this partnership between LEGO® and FIFA,  both organisations were able to generate additional revenue from the trophy, demonstrating how a well-protected intellectual property asset can create and generate additional revenue streams through strategic licensing arrangements.

The FIFA World Cup™ Trophy illustrates how different forms of intellectual property protection can be used together over time to create commercial value. What began as an industrial design registration evolved into trademark protection, allowing FIFA to maintain control over one of the most recognizable symbols in sport long after the original design rights expired.

If you have any questions about trademarks, patents and industrial designs and how they relate to your IP strategy in Canada, reach out to a member of our Canadian team. 

This article was prepared with assistance from summer student Elan Foorer. 

Subscribe to receive more articles like this here.