A football dispute off the field – the Brazilian spray patent battle

Brazil is recognized worldwide for the quality of its football players and for the team, which is five times world champion. But a dispute related to the sport has been highlighted in recent years.

At the heart of the dispute is the spray used to mark the distance between the barrier's position and the ball, to take a free kick in football matches. The spray can be considered a turning point, since by helping to comply with the distance rule, it strengthens the referees’ authority and optimizes the time spent after a foul, thus increasing the dynamics of the match.

The inventor of this spray is Brazilian and founded a company to exploit and market the products derived from his patents which cover the spray composition not only in Brazil, but also in many other countries.

Figure 1: The spray has been used in Brazil since 2002. Source: globoesporte.com.

In the end of October 2020, the patent that has been object of a big dispute between Fédération Internationale de Football Association – FIFA and the spray’s inventor expired in Brazil. However, the expiration of the patent does not mean that the disputes on the technology will be over.

Today there are two Court Actions on this matter. The first is an infringement court action filed by the inventor´s Company against FIFA and the second is a nullity court action, filed by FIFA contesting the validity of the patent. Requesting the patent nullity before the Federal Courts in a concomitant court action is a common strategy adopted by defendants of infringement lawsuits. 

In parallel, the administrative nullity of the patent was requested by a third-party in Brazil. Nevertheless, in 2016, the Brazilian Patent Office (BRPTO) decided to maintain the patent, since the arguments submitted against the patent were not enough to invalidate the patentability requirements.

Before the Rio de Janeiro State Court, the inventor stated that, in 2002, its invention was approved by the Brazilian Football Confederation, also known as CBF, and the use of the spray has become mandatory in all football games organized by CBF. The invention was also part of tests in several football championships, in whole Latin America.

The inventor also affirms that he tried to negotiate the use and even sale of the patent with FIFA, but that the negotiations never prospered, despite numerous tests carried out in different championships. However, during the negotiations, the inventor realized that a third party was already copying his invention since 2009, with the supposed endorsement of FIFA members, in his words.

In its turn, FIFA states that the inventor's allegations are unfounded, having devoted every effort to impose the sale of the patents to FIFA failing to observe the technical and commercial development of the product, which ended up surpassed by other innovative barrier sprays produced by third parties.

FIFA also defended itself by informing that there are patent holders in several countries, using technologies that appealed to consumers for using less greasy composition, with better visibility in the field, faster disappearance, ecologically better adapted, among other functionalities, with no indication that said products have infringed the author's patent.

A decision was rendered in the infringement action in June this year by the first circuit judge to reject the claim, considering that the inventor was unable to prove that the products used by FIFA correspond to infringed copies of his products and failed to prove any kind of damage. The Brazilian inventor appealed against this decision before higher courts, but the appeal is still pending of examination.

As for the nullity action, this is awaiting the conclusion of the expert evidence to clarify the controversy, especially regarding the presence of inventive step and the fulfillment of the requirement of sufficiency of disclosure of the patent granted by the BRPTO.

The spray is being used in Brazil since 2002 in all official matches and the impacts of this dispute may already be observed by the football fans. Starting this year, the referees are not allowed to use the spray in any official match, including the Brazilian Football Championship matches, which started last August.

Considering the extent of the legal dispute, it is highly possible that the new World Cup football champion will be known way before the lawsuit champion. Meanwhile, all football and patent fans will have to stay tuned to keep track of both battles.

Source: Lexology - https://www.lexology.com/library/detail.aspx?g=cf4fdb6a-37d4-47ec-8cb7-af83aa76ca5c