Companies thinking of leveraging the 2010 Winter Olympics in their marketing and advertising campaigns should be aware of the complex legislative regulation surrounding use of marks relating to the Olympic Games and the Paralympic Games (Olympic Marks).
The Canadian Trade-marks Act (TMA) affords registered Olympic Marks the same protection as other trade-marks registered under the TMA. However, the majority of Olympic Marks are protected as official marks, which have the advantages of not being subject to substantive examination by the Trade-marks Office and not being restricted by wares and services. The TMA also prevents anyone from adopting a mark that so nearly resembles the official mark it is likely to be mistaken for one. Examples of Olympic Marks that are official marks are WHISTLER 2010, ROAD TO VANCOUVER, and 2010 GAMES.
Since 2007, Olympic Marks have also benefitted from special protection under the Olympic and Paralympic Marks Act (OPMA). The Canadian government enacted the OPMA mainly to help curtail "ambush marketing," a practice common around major sporting events, whereby a business intentionally deceives consumers into thinking that it is an official event sponsor, thereby undermining the businesses that do hold official sponsorship titles.
The OPMA protects not only 'obvious' Olympic Marks, but also the use of certain words or expressions, which, if combined, may be a consideration in finding whether someone has acted in a prohibited manner. For instance, where a business uses the words 'medals' and 'gold,' which are covered by the OPMA, in its advertisements, the OPMA requires a court to take into account evidence of use of the combination of 'gold medals' when determining whether the business has acted contrary to the OPMA. Protection for Olympic Marks pertaining exclusively to the Vancouver Olympics ends on December 13, 2010.
The OPMA contains two distinct prohibitions: one regarding the use of Olympic Marks themselves, and the other regarding passing off.
No person other than the Vancouver Organizing Committee for the 2010 Olympic and Paralympic Winter Games (VANOC), the Canadian Olympic Committee (COC) or the Canadian Paralympic Committee (CPC) can adopt or use in connection with a business, as a trade-mark or otherwise, an Olympic Mark (or a translation thereof) or a mark that so nearly resembles an Olympic Mark it is likely to be mistaken for one.
There are, however, several exceptions to this rule:
- Consent. Use with VANOC, COC or CPC consent.
- Prior use or rights. Use consistent with use as of March 2, 2007 or existing rights pursuant to trade-mark registration or official mark publication prior to March 2, 2007.
- Geographical indication. Use of a protected geographical indication identifying a wine or spirit, if the wine or spirit originates in the territory indicated by the indication.
- Descriptive element. Use by a person of their address, the geographical name of their place of business, an accurate indication of the origin of their wares or services, or an accurate description of their wares or services to the extent that the description is necessary to explain those wares or services to the public.
- Athletes. Use by an individual who has been selected by the COC or the CPC to compete, or has competed, in an Olympic Games or Paralympic Games, or another person with that individual's consent, of the certain Olympic marks only in reference to the individual's participation in, or selection for, those Games.
- News reports. Publication or broadcasting of a news report relating to Olympic Games or Paralympic Games, including by means of electronic media, or for the purposes of criticism or parody relating to Olympic Games or Paralympic Games.
- Artistic work. Inclusion of an Olympic Mark in an artistic work, within the meaning of the Copyright Act, by the author of that work, as long as the work is not reproduced on a commercial scale.
Up to December 31, 2010, the OPMA also prohibits a person from promoting or otherwise directing, in association with a trade-mark or other mark, public attention to a business, products or services in a manner that misleads or is likely to mislead the public into believing that such business's products or services are approved, authorized or endorsed by VANOC, the COC, or the CPC ─ or that a business association exists between such business and the Olympic Games, the Paralympic Games, VANOC, the COC, or the CPC.
A variety of remedies are available under the OPMA, such as recovery of damages and profits, punitive damages, detention of imported products, the publication of corrective advertisement and injunctions. It is noteworthy that the OPMA makes it easier for an applicant (e.g., the COC, CPC, VANOC or official Olympic sponsors) to get interim or interlocutory injunctive relief because the legislation removes the common law requirement for the applicant to prove that it will suffer irreparable harm if the relief is not granted.
VANOC Branding Guidelines
In view of the complex legislative framework, VANOC issued the 2010 Olympic and Paralympic Brand Management Guidelines. These provide guidance to the public as to how VANOC intends to protect Olympic Marks and set out the framework VANOC uses to interpret and consider enforcement actions. The framework involves a two-stage process: an assessment of whether there has been an infringement or passing-off of the Olympic Marks; and a determination of the appropriate remedial action where there is infringement or passing-off.
In performing the infringement/passing-off assessment, VANOC considers the following six factors:
- Factually accurate use. Have the Olympic Marks been accurately used without distortion or modification?
- Relevant use. Is use of the Olympic Marks relevant to a larger initiative or storyline? Or, does the use constitute a gratuitous reference to the Olympic or Paralympic movements in an overly promotional manner?
- Commercially neutral. Are the Olympic Marks used in a commercially neutral manner that does not contribute to creation of an unauthorized business association between the Olympic/ Paralympic Movement and a commercial entity or otherwise commercially exploits the Olympic Marks?
- Undue prominence. Are the Olympic Marks used in a way so as not to enjoy undue prominence within the overall initiative or storyline?
- Use of Olympic and Paralympic visuals. Are Olympic or Paralympic visuals (e.g., Olympic logos, team uniforms, or Olympic medals) being used in connection with the business? (This use will typically be of high concern.)
- Unauthorized association. Are there any other elements that constitute an infringement of the Olympic Marks or an unauthorized business association?
VANOC will perform a numerical assessment for each factor, ranging from "1" (low concern) to "3" (high concern), and the aggregate score is calculated. A total score of "8" or below is considered, in most cases, to be unlikely to infringe. A total score that is between "9" and "13" is considered by VANOC to be potential infringement and subject to further review, and any aggregate score above "14" would be considered a likely infringement.
The guidelines also contain a number of examples in which VANOC uses the framework to assess infringement, and these examples can assist businesses in determining whether any proposed advertising or marketing plans would cause concern to VANOC.
McCarthy Tétrault Notes:
Due to the complex legislative regime involving the TMA and the OPMA, businesses must be careful when marketing products and services around the 2010 Winter Olympics. In addition to the general Olympic logos, indicia and marks, the marks and expressions covered by the OPMA are quite broad. For instance, the OPMA covers words like "Games," "2010," "21st" and "Medals." Combining those words with other expressions such as "Winter," "Gold," "Sponsor," "Bronze," "Silver," "Vancouver" and "Whistler" could also give rise to potential claims on the basis of a breach of the OPMA. Therefore, a business might not be using any Olympic logo, indicia, or mark but could still fall within the ambit of the OPMA.
While the guidelines are not legal rules per se, they are useful in helping to determine whether VANOC would be sufficiently concerned with certain proposed marketing or advertising plans such that infringement actions might be taken. That said, VANOC could seemingly consider many advertisements or use of any type of Olympic Mark as potentially infringing and warranting further internal review since any advertisement, even without any Olympic Mark, would appear to have a base score of "6" under VANOC's scoring system. Since VANOC's internal review procedures are unknown, it becomes difficult for companies to assess whether their proposed plans are offside the guidelines and therefore be subject to enforcement actions by VANOC.
In summary, businesses should be prudent and cautious when deciding whether to incorporate any Olympic Marks or any words or expressions covered by the OPMA in their advertising and marketing campaigns.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.