The 2022 World Cup is approaching and with it some old problems in Brazil come to the fore. This is the case of the counterfeiting of the national team’s shirts and the misuse of the Brazilian Football Confederation (CBF) trademark. Many Brazilians are excited to buy green and yellow clothes to support the Brazilian team on the field. However, among other reasons, the high price of the shirts makes many opt for counterfeit products.
In the sports market, piracy has a frightening impact: for every 10 team shirts sold in the country, four are pirated, according to a survey by the National Forum against Piracy and Unlawfulness (FNCP). The Forum estimates that football clubs lost more than BRL 2 billion to piracy in 2020.
The Pelé Law (Law no. 9,615), which sets forth on general rules for the sport, lays down that club symbols, badges and mascots are protected, regardless of registration.
“In any event, football clubs usually, regardless of this provision, register their trademarks with the Brazilian Patent and Trademark Office (BPTO). They register the name, symbol, badge, and mascot as a trademark. So there is double protection, both under the Pelé Law and the Industrial Property Law”, explains Eduardo Ribeiro Augusto, partner in the intellectual property area at Siqueira Castro.
In the case of the national team shirt, it has already been recognised by the courts as a symbol of the Brazilian team and belonging to the CBF. This type of recognition is known as trade dress, that is, when the visual characteristics of a product constitute a trademark.
In a World Cup year, the CBF is more attentive not only to piracy, but also to the misuse of the Brazilian team’s trademark. In 2014, the CBF notified more than 40 companies for misuse of its image. Gustavo Piva de Andrade, partner at Dannemann Siemsen, explains that there are two types of cases of infringement of the CBF trademark.
The first, called ambush marketing, usually occurs when companies who are not sponsors use some image of shirts and uniforms that resemble the Brazilian team. That is, the company did not associate itself with the CBF, but “hitches a ride” on the good will of the Brazilian team, especially at this time of the World Cup. This type of conduct has been repeatedly repressed by the courts.
This was the case, for example, in a lawsuit against Coca-Cola in 2010. The Third Panel of the Superior Court of Justice (STJ) upheld the ruling of the Rio de Janeiro State Court of Appeal (TJRJ) that ordered Coca-Cola to compensate the CBF for profits arising from misuse of its image in an advertising campaign.
In accordance with the lawsuit, the campaign showed former players Bebeto, Biro-Biro and Dario wearing clothes that were very similar to the Brazilian team’s uniform and induced spectators to associate the team’s success with the soft drink.
The TJRJ held that the company profited from the misuse, through imitation, of the uniform and badge owned by the CBF, which gave rise to the duty to pay compensation.
“Companies often argue that there cannot be a monopoly on the colours green and yellow. That's why context is so important. Indeed, the colours green and yellow are not subject to appropriation because they are the colours of the Brazilian flag. But there is a big difference between simply using the colours green and yellow in the abstract and using uniforms and shirts whose design is very reminiscent of the Brazilian team”, explains Andrade.
The second type of violation is piracy, in fact. It is the situation of a counterfeit shirt that is often produced in China and arrives in Brazil as if it were an official shirt of the Brazilian team. It is also the case of clandestine Brazilian factories that use informal labour, keep workers underemployed or in conditions that are similar to slavery.
"Brazilian law establishes that this type of conduct is both a civil and criminal offence, when someone else's trademark is reproduced without permission. So, today there is even well-developed case law in this area, he explains."
In addition to the poles on the streets near the stadia and at traffic lights, counterfeit products are also sold in the digital environment, that is, on e-commerce platforms. This brings some additional difficulties for the owner of the rights.
What the CBF normally does, explains Gustavo Piva de Andrade, is monitor online sales and inform the website if there is an infringement. Following notification, it is held that the platform can be held liable, but with some limits. He mentions some rules from the Internet Law. “When it’s just a trademark, it is held that you need a lawsuit to remove it. When it’s copyright, it is held that the notification is enough to hold the platforms liable”.
According to the expert, the problem is not in Brazilian legislation. “I consider Brazilian law adequate to prevent this type of infringement, because the law, although it does not expressly address, for example, this issue of ambush marketing, has several tools in Brazilian legislation that you can use to prevent this type of situation. So much so that the courts have been very receptive in recognising this type of infringement and protecting the Brazilian team and its sponsors,” he states.
Even so, there is a draft law (PL 1825/22) that establishes the General Sports Law and contains this issue of ambush marketing, reproduction and imitation of sports symbols. “If this law is passed, it will bring even more protection to curb this type of conduct. Current legislation already supplies the tools to combat this, but this Draft Law (PL) still exists to make this type of protection even more robust”.
In the opinion of Siqueira Castro’s lawyer, we have very adequate and up-to-date legislation to combat piracy in Brazil. In addition, Brazil is a signatory to international treaties regarding intellectual property. For him, a more educational part is lacking.
“It’s hard for you to respect what you don’t know. So, I think it's an educational issue. If you manage to act on these three fronts: educational, repressive and economical, I think you could make a lot of progress in the fight against piracy in Brazil, but the problem is not the legislation”, he asserts.
In the end, who ends up “paying the bill” for piracy are consumers. “The illegal market for sportswear in Brazil causes billions in losses for clubs, suppliers, official resellers and consumers, who are often harmed with products similar to the originals and who invariably pay more due to counterfeits”, explains the report by Globo Esporte.
According to a field survey commissioned by the Sports Industry and Commerce Association (Ápice) to Intelligence in Research and Consulting (Ipec), in 2021 alone, the government failed to collect BRL 2 billion in taxes. The companies in the sector bear a negative impact of BRL 9 billion, since 33% of the Brazilian market in this sector is currently illegal. In other words, the effect of this counterfeiting and mass sale of products is felt at all ends of the chain.
