BRITISH REPORT FOR LIGUE INTERNATIONAL DU DROIT DE LA CONCURRENCE
Question B: Ambush Marketing

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Explanation

The expression ambush-marketing was coined by Mr.Jerry Welsh when he was working for American Express. A typical example of ambush-marketing was the campaign by American Express during the 1994 Winter Olympics sponsored by Visa: "If you are travelling to Lillehammer, you'll need a passport, but you don't need a visa".

Initially conceived and depicted as very competitive type of marketing and a way to outsmart lazy sponsorship, ambush-marketing was contested by international organisations such as the CIO, FIFA, and similar organizers of world or regional events, who labelled them as “parasite marketing”, “gorilla marketing”, “piggyback marketing”, etc. In their view, ambush-marketing was a way for competitors to take advantage of the investments made by the sponsors of such events.

A distinction is usually made between marketing methods which directly infringe trade mark rights or copyrights (reference or usage of the trade mark or images of the official sponsor) or general and undisputed principles of unfair competition (untrue statements as its quality as an official supplier or sponsor) and more subtle marketing practices the qualification of which as unfair is more difficult or questionable. It is to address those more subtle practices that countries tempted to organise international sport events adopted specific provisions protecting the official sponsors of such events. These legislations gave rise to controversies as to their utility, effectiveness and efficiency.

The main question is therefore whether or not there is a need to adapt unfair competition legislation to ambush-marketing and whether such idea is appropriate from an economic standpoint. Isn't the scope of the current legislation (in particular unfair competition) sufficient to tackle such practices when unfair or does it need to be buttressed by the introduction of specific provisions, prohibiting certain ambush-marketing practices or protecting names, logos, images, beyond the usual scope of trade mark and copyright laws?

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Legal questions

1Has your country enacted legislation specifically aimed at prohibiting ambush-marketing? Or are there (concrete) plans to enact such legislation?

It is important at the outset of this response to set out what we consider to be ambush marketing. Ambush marketing at its most basic involves an attempt by a party to associate itself with an event (usually sporting) where that party is not an official sponsor of that event.

The UK has enacted the following two pieces of ambush-marketing legislation, both of which are aimed at the Olympic Games and Paralympic Games (the Games):

  • the Olympic Symbol etc. (Protection) Act 1995 (OSPA); and
  • the London Olympic Games and Paralympic Games Act 2006 (LOGA) (together, the Olympic Acts).

We are not aware of any plans to enact any further ambush marketing legislation.

1.1Can you describe the material contents of such legislation? Is the prohibition based on principles of fairness, interference in the economic sphere of the sponsor, misrepresentation, morality, or else?

OSPA

OSPA confers exclusive rights in connection with the use of certain “controlled representations”, namely the Olympic symbol (the five interlocked rings), the Olympic motto and certain protected words (namely “Olympiad”, “Olympiads”, “Olympian”, “Olympians”, “Olympic” and “Olympics”, including translations into any language) (the Olympics Association Right, or OAR)[1].

OSPA also prevents third parties from using, in the course of trade, such words or something so similar to those words so as to create in the mind of the public an association with the Olympic Games or the Olympic Movement[2].

A person uses a controlled representation if he affixes it to goods or packaging of goods, incorporates it in a flag or banner, offers or exposes for sale, puts on the market or stocks for those purposes goods which bear it or whose packaging bears it, imports or exports goods which bear it or whose packaging bears it, offers or supplies services under a sign which consists of or contains it or uses it on business papers or in advertising[3].

OSPA was amended by Schedule 3 of LOGA. LOGA clarified the concept of “an association” so as to include any kind of the following (which is not an exclusive list):

  • contractual relationship;
  • commercial relationship;
  • corporate or structural connection; and
  • the provision of financial or other support for or in connection with the Olympic Games or the Olympic Movement[4].

LOGA also amended OSPA so that it contains the following defences to infringement:

  • publishing or broadcasting a report of a sporting or other event forming part of the Olympic Games;
  • publishing or broadcasting information about the Olympic Games;
  • incidental inclusion in a literary work, dramatic, artistic work, sound recording, film or broadcast; or
  • inclusion in an advertisement for a publication or broadcast of the kind above[5].

These defences do not apply to advertising material which is published or broadcast at the same time as, or in connection with, a report or information[6].

LOGA amended OSPA by extending the same protection against the unauthorised use of Olympic-related words to Paralympic-related words. The Paralympics Association Right applies in the same way as the Olympics association right, protecting the Paralympic symbol, the Paralympic motto and Paralympic-related words (namely “Paralympiad”, “Paralympiads”, “Paralympian”, “Paralympians”, “Paralympic” and “Paralympics”)[7].

These exclusive rights are conferred upon a person appointed by the Secretary of State by way of statutory instrument[8]. The British Olympic Association (BOA) currently holds these rights, with the London Organising Committee of the Olympic Games Limited (LOCOG) also being able to enforce them until 31 December 2012. It is doubtful whether the proprietor of the right can authorise others to enforce the right on its behalf as, under OSPA, an action for infringement of the OAR is actionable by the proprietor[9].

LOGA

LOGA also creates an exclusive right in relation to the use of any representation in a manner likely to suggest to the public that there is an association between the London Olympics and goods and services or a person who provides them (the London Olympics Association Right, or LOAR)[10]. LOGA makes it an infringement of the LOAR if, in the course of trade, a person uses, in relation to goods and services, any representation (of any kind) in a manner likely to suggest to the public that there is an association between the London Olympics and the goods or services or a person who provides them. The current holder of the LOAR is LOCOG[11] and the same provisions allowing only the proprietor to enforce apply under LOGA as under OSPA[12].

LOGA contains a statutory obligation upon LOCOG to keep a statutory register of those persons who have been granted an authorisation by LOCOG to associate themselves with the Games.

Reflecting the provisions in OSPA, the concept of an association includes any kind of the following (not an exclusive list):

  • contractual relationship;
  • commercial relationship;
  • corporate or structural connection; and
  • the provision of financial or other support for or in connection with the Olympic Games or the Olympic Movement[13].

A person does not suggest an association between a person, goods or a service and the London Olympics by making a statement which:

  • accords with honest practices in industrial or commercial matters; and
  • does not make promotional or other commercial use of a representation relating to the London Olympics by incorporating it in a context to which the London Olympics are substantially irrelevant[14].

The following defences, which reflect defences under the Trademark Directive, apply under LOGA (provided that in each case the use is in accordance with honest practices in industrial or commercial matters):

  • use by a person of his own name or address;
  • use of indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, time of production of goods or rendering of services or other characteristics of goods and services; or
  • the use of a representation which is necessary to indicate the intended purpose of a product or service[15].

Reflecting other defences available under OSPA, the LOAR is not infringed by the use of a representation:

  • in publishing or broadcasting a report or sporting or other event forming part of the London Olympics;
  • in publishing or broadcasting information about the London Olympics;
  • an incidental inclusion in a literary work, dramatic work, artistic work, sound recording, film or broadcast; or
  • as an inclusion in an advertisement for a publication or broadcast of the kind set out above[16].

These defences do not apply to advertising material published or broadcast at the same time as, or in connection with, a report or information.

To reflect the EC principle of exhaustive rights, the LOAR is also not infringed by the use of the representation in relation to goods if:

  • they were put on the market in the EEA under LOCOG authorisation;
  • the representation was used in relation to the goods when they were put onto the market; and
  • LOCOG does not oppose further dealings in the goods for legitimate reasons[17].

LOGA also provides that the Secretary of State may make regulations (including making prohibitions) about advertising of any kind in the vicinity of London Olympic events (Advertising Regulations)[18] having regard to, amongst other things, compliance with the Host City Contract, requests or guidance from the International Olympic Committee (IOC) and amenity and public safety[19]. Such Advertising Regulations have yet to be made.

Such Advertising Regulations may apply in respect of advertising of any kind including the distribution of documents and articles and the display or projection of words, images, lights or sounds. They may apply in respect of advertising of any kind, including advertisements of a non-commercial nature and announcements or notices of any kind[20] and in any form, including the distribution of documents or articles, the display or projection of words, images, lights or sounds and things done on materials which may have purposes other than as an advertisement[21].

Advertising Regulations shall apply for whatever period of time the Secretary of State designates[22]. The Advertising Regulations may impose obligations on persons who own, occupy or have responsibility from the management of land, premises or other property[23].

Basis of Prohibition

The prohibitions, at their most basic, are economic protections, designed to further the interests of LOCOG in organising the Games. Under the Olympic Acts, LOCOG (and the BOA in the case of OSPA) has complete power to permit others to use controlled representations and associate themselves with the Games.

LOCOG’s mission statement is “to stage inspirational Games that capture the imagination of young people around the world and leave a lasting legacy”. LOCOG’s interest is to host the best Games possible which will be done through a myriad combination of things, including (but not limited to) maximising revenue, generating interest, inspiring the public, giving athletes the best chance of competing at their top level, leaving a sustainable environmental, social and economic legacy etc.

Under the Olympic Acts, LOCOG has been given the freedom to use (and authorise others to use) the controlled representations and allow persons to create an association between themselves and the Games to achieve this in whatever way it wishes.

For example, were LOCOG to decide that inspiring youth was very important in its vision for the Games, it could allow schools to host “Mini-Olympic Games”, using the controlled representations. If LOCOG were to decide that it wanted to leave the best environmental legacy that it could, it might think about allowing any company which met certain recycling targets to use the controlled representations to encourage them to do this.

1.2Is there a unique test applicable to identify unfair ambush-marketing from competitive marketing practices or are there several tests? Can you describe it/them? Is the test referring to an attempt to get associated with the event or to pass off as a sponsor or is the test referring to the mere fact that the ambush-marketer is obtaining visibility without contributing to the event / whilst the sponsor paid for exclusive rights? In the first case, did the introduction of these specific provisions lowered the usual standard of confusion in your country? In the latter case, how exclusive should be the right of the sponsor to trigger application of these provisions? Are the anti ambush-marketing provisions aimed at the behaviour of competitors to sponsors to such events or do they have a broader scope, i.e. prohibiting any parasitic behaviour independently from the association possibly made with the sponsors? What is the type of evidence to be produced to support an ambush-marketing claim, marketing polls, the average consumer, etc.?

Tests

OSPA - There is no unique test under OSPA further to that outlined above, which prevents third parties from using, in the course of trade, the Olympic Symbol, Olympic Motto and Olympic Words or something so similar to those words so as to create in the mind of the public an association with the Games or the Olympic Movement.

LOGA - For the purpose of considering whether a person has infringed the LOAR, a court may take account of his use of a combination of expressions. This works by separating expressions into two groups. A combination of one of the expressions in the first group with another expression in the first group or an expression in the second group is indicative of an infringement:

First group words include:

  • “games”;
  • “two thousand and twelve”;
  • “2012”; and
  • “twenty twelve”.

Second group words include:

  • “gold”;
  • “silver”;
  • “bronze”;
  • “London”;
  • “medals”;
  • “sponsor”; and
  • “summer”.

The Secretary of State may add to the words in this list[24].

Aim of the Tests

The tests under OSPA and LOGA are broad reaching in that they both refer to an attempt to associate with the Games. The use of language referring to use “in the course of trade” and “commercial/contractual relationship” infers that it is the attempt of a company to pass itself off as being somehow commercially associated (as an official sponsor or the suchlike) with the Games that is key alongside the ambush-marketer obtaining visibility without contributing to the event where the sponsor has paid for exclusive rights of association.

The tests lower the standard against which confusion is normally assessed in intellectual property right infringement in the UK. A more detailed appraisal of this is included in section 3 below. Sponsor exclusivity is relevant only in that, once a company is authorised under OSPA and included on the statutory register, it will not be an infringement for that company to create an association with the Games.

The tests are aimed not just at the behaviour of competitors of sponsors, but at any parasitic behaviour which attempts to gain a commercial association with the Games without authorisation.

Evidence

OSPA – Establishing a case of infringement under OSPA requires evidence merely that the defendant has used a controlled representation in a restricted way. There is no requirement for proving reputation or confusion and therefore survey evidence is unlikely to be useful. It is essential to prove that the defendant has used a controlled representation. In many cases the alleged acts will be admitted rather than requiring formal proof (the case then focussing on whether the admitted act constitutes an infringement), but where there is no admission then evidence of the use, by way of seized goods or trap purchases etc. is essential.

LOGA – LOGA requires there to be an association created which is likely to suggest to the public “there is an association between London Olympics and goods and services or a person who provides them”. Evidence in the form of marketing polls or from experts in marketing, that the public do create such an association could be helpful in proving this, although in many cases the court regards such evidence of limited use as the question is one of inference from primary facts and is a matter on which the court can draw its own conclusion.

1.3Does this legislation include provisions extending the protection usually offered to the event’s registered name or official logo by trade mark and copyright law to avoid any reference to the games, or the tournament or the mundial or else and reserve such references to the official sponsors only?

In both cases, the ability to make reference to the Games is restricted to LOCOG (and the BOA in the case of the OAR under OSPA). LOCOG and the BOA can enforce and license this right as they see fit. If they consider that the references should be reserved exclusively for sponsors, that is a matter for their discretion.

Trade Mark Law

The legislation extends the protection which would be offered by trade mark law to the specified Olympic-related words and symbols. However, many of the Olympic and Paralympic words are registered as trade marks and therefore the protections offered under the Trade Marks Act 1994 (TMA) also apply (please see section 3, below).

Under OSPA, the prohibition on the use of the Olympic symbol, motto and protected words is absolute, without the need for use in connection with goods and services and thus without any relevant goods or services being specified. This makes the protection under OSPA wider than that under TMA section 10(1) (covering identical marks/identical goods).