The Sydney 2000 Olympic Games are drawing near. If you are starting to think about a sports or Olympic themed advertising or marketing promotion, you should be aware of broad ranging legislative restrictions which may affect your promotion in Australia.
Sydney 2000 Games (Indicia and Images) Protection Act
With the introduction of the Sydney 2000 Games (Indicia and Images) Protection Act (the Act) in 1996, the extent to which you can use images, words, phrases and other indicia of the Olympic Games was restricted. That Act introduced restrictions that are much more limiting than the Olympic Insignia Protection Act of 1987 and the Trade Marks Act. Under the Act, only the Sydney Organising Committee for the Olympic Games (SOCOG), the Sydney Paralympic Organising Committee (SPOC) and licensed users may use the protected indicia and images for commercial purposes.
Sydney 2000 Games indicia
The protected Sydney 2000 Games indicia are certain words, expressions and combinations of words associated with the Sydney 2000 Olympic and Paralympic Games as set out in the following tables.
Using other words and phrases which so closely resemble protected indicia that a reasonable person would be likely to mistake them for protected indicia is prohibited, as is using the indicia in a language other than English.
Sydney 2000 Games images
Protected Sydney 2000 Games images are visual or aural representations that, to a reasonable person in the circumstances of the presentation, would suggest a connection with the Sydney 2000 Olympic and/or Paralympic Games. Any photographs, images, footage or other visual content and any soundtracks or other aural representations that you propose to use in your advertising or promotional material must be reviewed carefully in the context of that material to determine whether they suggest any such connection.
The prohibition under the Act is on the use of protected indicia or images for "commercial purposes". A person will use indicia and images for commercial purposes if:
- the person applies the indicia or images to goods or services; and
- the application is for advertising or promotional purposes, or is likely to enhance the demand for the goods or services; and
- the application, to a reasonable person, would suggest that the person is or was a sponsor of, or the provider of other support for, the Sydney 2000 Olympic or Paralympic Games or events arranged by certain bodies in connection with those Games.
Importantly, you can be in contravention of the Act even if you are not the person who applies Sydney 2000 Games indicia or images to goods or services. You will contravene the Act if you supply or offer to supply goods or services, expose goods for supply or keep goods for supply (eg if you are a retailer or distributor of goods) or if you aid, abet or are involved in a contravention.
What is use for commercial purposes?
Whether use is for commercial purposes will be a question of fact in all the circumstances. There is little judicial guidance as to what will constitute use for commercial purposes.
In Australian Olympic Committee v Baxter (1996) 36 IPR 621, Baxter applied for registration of the trade mark THE OLYMPIC in respect of footwear. As a condition of registration, Baxter was required to associate the trade mark with an earlier trade mark which it had continuously registered since 9 October 1907. The AOC argued that Baxter was attempting to broaden the existing registration and opposed the application.
The opposition was dismissed. It was held that while trade mark use of the word "Olympic" would be caught by the Act, the protection was qualified in that the use must suggest to a reasonable person that the user was a sponsor or provider of other support to the Sydney Olympic Games. It was not enough to suggest some vague, undefined connection with the Olympic Games or the Olympic movement in general. A precise association with the Sydney 2000 Games had to be suggested.
If a person uses Sydney 2000 Games indicia or images in contravention of the Act, the relief that a court may grant includes:
- an injunction (on the application of SOCOG, SPOC or a licensed user);
- an order requiring the person to publish corrective advertisements;
- damages; and/or
- any other remedies provided by law, including remedies for misleading or deceptive conduct under the Trade Practices Act 1974.
In addition, the Australian Customs Service is authorised to seize goods which bear protected indicia or images and which are imported into Australia without SOCOG’s permission.
What you should do
If you are involved in the supply or sale of goods or services to which Sydney 2000 Games indicia or images are applied, you must ensure that your suppliers are licensed to use those indicia or images. SOCOG has licensed over 80 users in respect of more than 2,500 products. SOCOG maintains a register of licensed users which is available for inspection. Copies of the register can be viewed or obtained for a small fee from SOCOG (in Sydney: (612) 9297 2000) or the offices of IP Australia (1300 65 10 10).
SOCOG trade marks
Special legislative protection for Sydney 2000 Games indicia and images was considered necessary because many of the indicia and images were not likely to be distinctive and therefore registrable as trade marks.
However, you should be aware that SOCOG has obtained registration of a number of trade marks, including OLYMPIC CLUB, THE OLYMPIC STORE, TEAM AUSTRALIA, TEAM AUSTRALIA 2000 and TEAM MILLENNIUM OLYMPIC PARTNERS. As SOCOG and other entities involved with the Olympic Games may have trade mark protection for any number of trade marks, you may need to obtain trade mark searches to ensure that your proposed advertising or marketing promotion does not use material protected by registered trade marks.
Olympic Insignia Protection Act 1987
The Olympic rings is one of the most recognised trade marks in the world and most people are aware that the rings cannot be used without consent. In Australia, the Olympic rings symbol is protected by The Olympic Insignia Protection Act 1987 which confers on the Australian Olympic Committee copyright in that symbol and grants to the AOC a monopoly in certain protected designs. Protected designs include the design of the Olympic rings, a "torch and flame" design and a number of other registered Olympic designs. Importantly, variations of the Olympic rings symbol and other imaginative versions of the symbol may also infringe the AOC’s rights. For example, in the New Zealand case of NZ Olympic Association v Telecom NZ (1996) 35 IPR 55, a telephone company published a clever "5 ring" advertisement just before the Atlanta Olympics featuring the following:
RING RING RING
The words "ring" were in different colours: blue, black, red, yellow and green. An injunction to restrain the advertisement by the NZ Olympic Association was not granted by the High Court, as there was no significant likelihood of assumption by readers that Telecom NZ was connected with or a sponsor of the Olympics. However, the judge observed that the decision should not be misunderstood as a licence to all and sundry to caricature the Olympic symbol and that the case was a borderline one.
New legislation has recently been passed in New Zealand, the Flags, Emblems and Name Protection Amendment Act, which protects words and phrases related to the Olympics by prohibiting certain activities unless the written authorisation of the New Zealand Olympic Committee has been obtained. The words protected include words relating to Sydney such as "Sydney 2000" and "Sydney Games".
Images, drawings, photos, phrases and other indicia may be protected by laws other than the legislation described above, for example, by copyright or trade mark legislation. In addition, if you have any connection with the Sydney 2000 Olympic Games, including with any of the venues being used for the Games or the supply of any products or services in connection with those venues or the Games, it is likely that your contract will contain other marketing and advertising limitations which are more restrictive than those that apply generally under the legislation.
This article provides a summary only of the subject matter covered, without the assumption of a duty of care by Freehill Hollingdale & Page. The summary is not intended to be nor should be relied on as a substitute for legal or other professional advice.
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