When in 2007 Glasgow won the right to stage the Commonwealth Games due in summer 2014, it was a condition of its victory that it sought statutory protection for the Commonwealth Games brand. Carla Basso reports on the IPO proposals that have now surfaced.
Topic: Ambush marketing
Who: Intellectual Property Office (“IPO”)
Law stated as at: February 2009
In 2007 Glasgow won the right to host the 2014 Commonwealth Games (the “Games”). The Scottish Parliament subsequently passed the Glasgow Commonwealth Games Act 2009 (the “Act”) to satisfy bid conditions that suitable anti-ambush marketing protections were in place to support the Games.
The Scottish Assembly does not have powers in this intellectual property-related area. This is reserved to the UK government under the Scotland Act 1988 and so an Order will need to be made under section 104 of that Act to implement the necessary IP protections. The legislation needed has to be put in place by 2010 and a summary of the draft Order (but no full text) has been published by the IPO, with comments from interested parties to be returned by 27 April 2009.
The summary of the Order states that the Host City Contract requires that “no persons conduct any marketing, advertising or promotional campaigns in the Host Country which imply any approval, affiliation, connection or sponsorship of or with the Games, Games Intellectual Property Rights or any Games Team, or the year of the Games which are not expressly authorised by the CGF Executive Board or any other party authorised to grant such rights”, and section 10 of the Act bans advertising in the vicinity of Games locations.
The Order will further protect the Games by preventing unauthorised association with the Games outside the excluded advertising zones. It will do this by creating a specific “association right” which is defined in the summary Order as “the creation of a commercial, contractual, corporate or financial link between a person, product or service and the Games”. This is similar to the statutory association right created in connection with the London 2012 Olympic and Paralympic Games.
The new association right would not be infringed where:
• an association is made “in an irrelevant context, provided it is not a promotional or commercial use and accords with honest industry practices”;
• where the association is authorised – for example the Organising Committee can grant authorisation to be associated with the Games to a person/class of persons, and the Committee will be obliged to maintain a public register of authorised persons; and
• certain other exceptions apply, such as where a registered trade mark (for instance, as a result of the staging of the 2002 Commonwealth Games in Manchester, Manchester City Council has multiple registrations of trade marks including the words “Commonwealth Games” and then there is “Commonwealth Dreams” registered for education and training services by Newham College of Further Education) or design is used, or where there are pre-existing legitimate uses, or where a Games event is being reported on in the media.
If the association right is infringed, the Organising Committee will be able to bring an infringement action. Normal IP remedies will apply (including an order for removal of the unauthorised representation from goods, their destruction where that is not possible, or their delivery up).
These remedies will be subject to time limits (so no delivery up orders will be available after 6 years from when the goods were made or the unauthorised representation applied) and the Organising Committee will also be subject to remedies against them if they make groundless threats of infringement proceedings. The court will have discretion to apply alternative remedies.
Why this matters:
Advertisers who objected to the similar association right during the introduction of the London Olympics Bill for being too wide ranging a combination of trade mark and passing off protection (which had some effect on the final framing of that legislation) should consider submitting similar objections here within the consultation deadline of 27 April 2009.
Following the consultation close, the Order will not come into force until six months after the UK Parliament makes it, which will at least give advertisers some time to consider and adapt their practices to take account of the new legislation.