Using the federal eagle in advertising: The national football team as a marketing tool?

To capitalise on the buzz surrounding what is hoped to be a fairytale summer, several companies are once again bound to jump on the World Cup bandwagon with advertising campaigns related to the men's World Cup this year and the Women's World Cup next year. However, any such campaign must be carefully thought out. In the contentious field of "ambush marketing", a form of unauthorised advertising, it is easy to cross the line into unlawful actions. Ambush marketing is when companies try to claim the benefits of a sponsorship without committing to the obligations to which an official sponsor is held. An advertising concept related to the national team in the months before a World Cup would seem to be an ideal candidate for such a scheme. Boosting the profile of your company by associating with the positive image of the German team without paying the high costs for sponsoring rights? What's not to like? 

The truth is that the German Football Association (DFB) enjoys comprehensive market protection related to the national team(s) and this should be taken into account in promotional initiatives. In addition being the proprietor to the national team's logo ("DFB Eagle"), which is protected as an EU trade mark and in the form of International Registrations with protection extended to a large group of countries, the DFB is also the rights holder for the word/figurative mark "Die Mannschaft" ("The Team"). Even though this name for the German national squad is controversial and not used as much lately, the DFB has not given up the trade mark protection, meaning that it cannot be used in advertising without observing certain conditions. 

Not all German eagles are the same – Legal classification

Nevertheless, there is no wholesale ban on companies relating their advertising to the national team. "Clean ambush" strategies can be used in advertising perfectly lawfully. But does the same apply to using Germany's national emblem, the "federal eagle"?:

[...] the one-headed black eagle [...], its head turned to the right, its wings open, but with closed feathering, and its beak, tongue and claws in red.

This is how the symbol is described in the announcement on the coat of arms of Germany and the federal eagle dated 20 January 1950 (Federal Law Gazette I, 26). However, no specific fixed visual depiction has ever been paired with this heraldic description, consequently meaning that there is no "one" federal eagle. The German Bundestag even acknowledges this on its homepage – with the result that the Federal President, Federal Council, Federal Constitutional Court and other offices and institutions use different designs of the eagle. All these depictions are to be legally classified as national symbols, as they are figurative images used by a state to indicate its sovereignty. 

What follows from this classification is not just a prohibition on registering such trade marks pursuant to section 8 (2) no. 6 German Trade Mark Act (MarkenG), but also potential consequences for using the federal eagle in advertising: Anyone who unlawfully tags their own goods or services with national symbols or imitations of them in contravention of section 6a no. 1 German Trade Mark Act (MarkenG) risks having to pay a fine of up to EUR 5,000 (section 145 (1) no. 1, 5 German Trade Mark Act (MarkenG)). The symbol being assessed is considered an imitation if it has the same character (colour) or significant features of the national symbol as stated in its official heraldic description (Munich Higher Regional Court, judgment dated 5 February 2015 – 6 U 3249/14 (eagle in a circle)). Furthermore, it is against section 124 no. 1 German Administrative Offences Act (OWiG) to use the federal eagle publicly for one's own purposes without authorisation.

Legal consequences – depending on the context and the specifics

After an attempt was made to deregister the word/figurative mark for the DFB Eagle mentioned above, the German Patent and Trade Mark Office (DPMA) came to the surprising realisation that the DFB Eagle is generally a heraldic imitation of the federal eagle. However, it held that the overall context gives no impression of state sovereignty, which can be attributed to the additional verbal elements "DEUTSCHER FUSSBALL-BUND" (German Football Association). The verbal elements and the high profile of the DFB means that the federal eagle in the contested trade mark does not bear the meaning of sovereignty. Furthermore, even though there are grounds for refusing the trade mark, it has approval from the German Federal Minister of the Interior under section 8 (4), second sentence German Trade Mark Act (MarkenG). The application for deregistration was therefore refused, meaning that the DFB's trade mark is still in effect (DPMA, decision dated 30 October 2015 – 30 2012 058 725-S 208/14).

The legal status of this DFB trade mark puts a larger group of advertisers at risk. Anyone using the federal eagle in their advertising has to pay attention to two factors: The national symbol must not be imitated and the DFB's trade mark must not be infringed.

One supermarket chain found this out during the 2014 World Cup, when it sold car floor mats and football fan apparel with an eagle symbol on them. The DFB took out an interim injunction against this, which Munich I Regional Court then affirmed, as it anticipated a likelihood of confusion with the DFB eagle and thus a trade mark infringement (Munich I Regional Court, judgment dated 7 August 2014 – 11 HKO 10510/14). The supermarket chain then attempted unsuccessfully to get the trade mark deregistered as mentioned above.

A singer went through something similar when he developed his idea of the "National Party Team" and designed a dark blue jersey with its own logo based on that of the DFB. The jersey had an eagle on the left chest. However, this grinning eagle only had one wing, while the other had been replaced with a beer mug. The DFB successfully challenged the singer's campaign before Munich Regional Court by applying for an interim injunction. The DFB's statement included the argument that a consumer may be confused as to the origin of the jersey because it is too similar to past training kits (as reported by Der Spiegel among others (full article behind a paywall)). 

Nevertheless, such a judgment is not set in stone for all uses of the eagle for promotional purposes. One example of how an advertising campaign might function within the framework of the law comes from a comparison website's jersey for EURO 2024. Visitors to this website could design a white jersey featuring a coat of arms with the eagle on the left chest. This was overlaid with the text "DEUTSCHLAND". The company put its own name in the colours of the German flag in the middle. A layperson might get the impression that it was an official DFB jersey, meaning that it would generally be considered a trade mark infringement. However, the logo may be distinct enough from the DFB trade mark and therefore could be seen as a successful example of an advertising strategy. However, care must be taken in such instances. It is easy to cross the line into a trade mark infringement, for example if one of the defining elements is copied exactly or only minor changes are made.

Using the colours of the German flag – An all-clear with some caveats

But what about the national colours? These get the green light: Everyone is generally free to use the colours black, red and gold. This means indeed that there are hardly any boundaries on creativity, but like with the federal eagle, the whole matter comes up against its limits if the design goes beyond just the colours. For example, the German flag as a national symbol is to be viewed within the meaning of section 8 (2) no. 6 German Trade Mark Act (MarkenG) as being subject to section 145 German Trade Mark Act (MarkenG). 

Don't fall foul of the rules: Follow the legal limits on marketing

In summary, advertisers need to watch out with the federal eagle and other symbols – it is a fine line between an imaginative marketing strategy and the limits of the law. Creatively distancing their goods and services from protected elements and focusing on emotions instead of official symbols can allow companies to benefit from the excitement around the World Cup. 

The federal eagle is not all that advertisers have to worry about – find out more on the subject here: Advertising for the World Cup – What is acceptable?