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Marketing Your Brand around Olympics: Indian Legal Position

30

JUL

2021

With the recent wrapping up of the Euro Cup and the upcoming Olympics in Tokyo, sports enthusiasts around the world are glued to their screens. Such periods of high-level consumer engagement from around the word is an opportune time for many marketers to increase the visibility of their brands. However, if you are a non-sponsor, looking to launch a promotional campaign surrounding the seasonal hype of a global sporting event such as the Olympics, it would be prudent to familiarize yourself with the concept of ambush marketing and the prevailing laws that restrict the use of a sporting event insignia with non-sponsors. This article will explore the concept of ambush marketing, the laws in place in India that protect the intellectual property of the event organizers with a special focus around the protection of the International Olympic Committee’s (IOC) intellectual property.

Ambush Marketing

Ambush Marketing is the practice of coat-tailing upon another advertiser’s campaign without actually investing in that company’s campaign and is most commonly observed around international sporting events. An ambush marketing campaign can also be an economical option for a cost-conscious non-sponsoring company as most of these sporting events enjoy high levels of international publicity. However, the practice is considered unethical due to the hefty amounts of money companies pay to become sponsors of such events, while an ambush marketer merely works off from the hype that is already generated around such an event. Additionally, the spirit of the prevailing law seeks to protect the reputation earned by brands from predatory marketers in an effort to protect their exclusive intellectual property.

The Tokyo 2020 Brand Protection Guidelines (“Tokyo Guidelines”) refer to ambush marketing as the intentional or non-intentional “use of intellectual property associated with the Olympic and Paralympic Games or the misappropriation of images associated with the Olympic and Paralympic Games by organizations or individuals, without authorization from the IOC, International Paralympic Committee, and the organising committee, which are the rights holders of this intellectual property.”[1] The IOC also extends this definition to the use of graphics or words that bring to mind the Olympics by non-sponsors as ambush marketing.[2]

There are numerous well-known instances of ambush marketing which surround the world sporting events. Nike’s ambush marketing campaign in the 1996 Atlanta Olympics is considered as one of the greatest when its competing brand Reebok was the actual sponsor of the event. Nike advertised on the streets of Atlanta confusing people to think that they were the actual sponsor; and the golden shoes worn by Michael Johnson, created by Nike were the cherry on the cake. However, in the 2016 Rio Olympics, when Nike was the official sponsor of the event, Usain Bolt, took off his eye-catching golden shoes, created by Puma, moments after crossing the finishing line and carried them triumphantly around the stadium. Those shoes were visible in almost every photo. Even the sport of Cricket is not safe from ambush marketers. During the ICC World Cup 1996 held in Sri Lanka, where Coca Cola was the official event sponsor, its rival Pepsi launched a campaign featuring prominent cricket players with the slogan ‘Nothing official about it.’

Permitted Use of the Olympic Symbols

The doctrine of fair dealing or fair use is the only exception in the law where one is permitted to use the intellectual property of another. The doctrine of fair use is captured under section 30 of the Trade Marks Act, 1999 (“TM Act”), which is an affirmative defence available against a claim of infringement by the proprietor of a registered trademark. Fair use is also captured under section 52 of the Indian Copyright Act, 1957 for personal research, criticism or review, reporting of current events. The essence of this exception is also captured in the Tokyo Guidelines which permits the use of the marks associated with the Tokyo games for the purposes of news reporting. The Guideline is, however, silent on the use for educational purposes.[3]

Based on the prevailing legal position of the law, if a fan were to post a clip of an athlete during the games from a personal social media account, it would not be construed as misuse for commercial purposes. However, a similar post by a non-sponsoring company’s blog or social media could potentially land the company in legal trouble.

The tightening of permitted use – Rule 40 of the Olympic Charter

Rule 40 of the Olympic Charter prevents IOC qualified athletes, coaches and other personnel from allowing their names, images and sporting performance be used during a ‘black out period’ (the period immediate before, during and after the games) without the prior permission of the IOC. This restriction is also applicable on the athletes’ personal sponsors, who are not official IOC sponsors. The IOC recently relaxed this rule through by-law 3 to Rule 40 in the Charter to allow IOC athletes to acknowledge or thank their private sponsors, who are not official IOC sponsors during the blackout period. However, if an athlete were to acknowledge/thank their sponsor, they cannot do so with the presence of other intellectual property of the IOC in the same post/ article.[4]

Intellectual Property rights of the International Olympic Committee (“IOC”)

Amongst the league of such international sporting mega-events, the IOC in particular has the benefit of an international treaty. Besides trademark registrations, it also has special protection under domestic laws in some countries including India and Australia, against the use of its marks by non-sponsoring entities.

Nairobi Treaty on the Protection of the Olympic Symbol (1981): Administered by WIPO, India became a party to this internationally ratified treaty from 1983. The treaty obliges the member states to refuse or invalidate any trademark registrations which are similar to IOC trademarks and prohibits the commercial use of any mark containing the IOC marks.

Protection of City + Year: Many countries around the world also allow for special protection to IOC marks when private entities approach their TM Offices to register a ‘City + Year’ format, e.g., “Rio 2016” or “Tokyo 2020.” The US Olympic and Paralympic Committee (USOPC) recently sued Puma for application of the trademarks “Puma Tokyo 2021,” “Puma Beijing 2022” and “Puma Paris 2024.” Puma retaliated by launching a counter suit for cancellation of the USOPC’s marks and argued that ‘Location + Year’ marks are descriptive and cannot be appropriated as trademarks. It also asserted that it wanted to promote its sponsored athletes. Puma was quick to withdraw its cases before the US Trademark and Trial Appeal Board and also withdrew similar cases claiming rights to FIFA and the UEFA marks.[5] It is generally agreed among Trade Mark Offices around the world that in the case of IOC’s ‘City + Year’ marks, distinctiveness is almost instantly acquired as soon as the city and year of the next games are announced.[6]

Protection under Emblems and Names (Prevention of Improper Use) Act, 1950 (India) (“Emblems Act”): Item no. 21 of the Schedule to this Act includes the name and emblem of the International Olympic Committee consisting of five inter-laced rings. Section 3 of this Act prohibits the use of protected emblems for activities relating to trading or business, among others. Therefore, a non-sponsor’s use of the term ‘Olympics’ or any other IOC insignia on a non-commercial blog may be construed as a promotional exercise, under the purview of prohibited use for ‘business.’ Additionally, section 9(2)(d) of the TM Act prohibits the registration of any trademark if its use is prohibited under the Emblems Act.

Indian Precedents

In ICC Development (International) Ltd. v. Arvee Enterprises and Anr (2003 (26) PTC 245), the High Court of Delhi differentiated between Ambush Marketing and passing-off. The law in India does not define ambush marketing. Unlike a passing-off action, ambush marketer does not seek to suggest a connection with the rights holder. The Court remarked that unlike the IOC trademarks and logos, ICC’s logos, including ‘World Cup’ did not enjoy any special protection under the Emblems Act, 1950. The Court further stated that ‘World Cup’ or the event was not covered by any international treaty or domestic law and therefore, the advertising campaign offering tickets to the event as prizes without using ICC logos was not held to be unlawful.

In ICC Development (International) Ltd. v. Britannia, ICC accused Britannia of misusing its logos and further of ambush marketing with its tag line “Britannia khao, World Cup jao.” The Court rejected ICC’s plea for interim injunction and stated that ambush marketing is not a cause for action. Additionally, the use of ICC’s logos was deemed lawful based on a reading of the contract terms between ICC and Britannia, which was one of the official sponsors of the World Cup.

Conclusion

The IOC trademarks are abundantly protected in India and around the world. Based on the restricted terms of use of the IOC trademarks, use of the same (including the word ‘Olympics’) by a non-sponsor even on a non-commercial blog, would not be entirely risk-free. Although, the question of enforcement of IOC’s rights in the digital arena is yet to be properly tested in court, such uses are likely to be perceived as an attempt to associate itself with the Olympics and attract a passing-off action.

At first glance, for any company, ambush marketing may seem like a clever move. However, this type of marketing also comes with many risks, the biggest being the negative connotation of it being unethical that goes along with it. If it is financially feasible, there are more obvious benefits that come along with sponsoring an event like the Olympics that cannot be derived from ambush marketing.


[1] Brand Protection Guidelines, The Tokyo Organising Committee of the Olympic and Paralympic Games, November 2019.

[2] Ibid.

[3] Ibid.

[4] Athlete 365, Commercial Opportunities for athletes, Rescheduled Olympic Games Tokyo 2020 (in 2021) – FAQs for athletes.

[5] Douglas N. Masters and Seth A. Rose, “Puma backs down on aggressive challenge to Olympic trademarks” Chicago Daily Law Bulletin, 167(75), June 29, 2021.

[6] Marianne Chappuis, WIPO Magazine < https://www.wipo.int/wipo_magazine/en/2012/03/article_0003.html> June 2012.

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