In our Autumn 2006 issue of Make Your Mark. (see our website at www.jenkins.eu), we ran a brief article highlighting the effects of the London Olympic Games and Paralympic Games Act (30 March 2006) ("the Act") on businesses' branding and marketing of products and services in the UK.
With the 2012 Games fast approaching, now is a good time for businesses to remind themselves of the draconian provisions set out in the Act. To summarise, the Act has created a London Olympics association right conferring the exclusive right to use any controlled mark or mark similar to a controlled mark that suggests a contractual, commercial, corporate, financial or other link between the user and the London Games.
An infringement may occur where a person uses in the course of trade words with the prefixes "Olympi-" or "Paralympi-", the interlocking rings symbol or the Olympic motto "Citius, Altius, Fortius" or something so similar as to be likely to create in the public mind an association with the aforementioned marks. In determining whether a person has infringed the London Olympics association right, the court may also take into account the use of a) combinations of any of the expressions set out in column A below or b) combinations of any of the expressions set out in column B below with expressions in column A or with other expressions in column B:
Defences to Infringement
Where a statement accords with honest practices in industrial or commercial matters and does not make promotional or commercial use of a representation relating to the London Olympics, no suggestion of an association between a person, goods or services and the London Olympics is deemed to have been made.
Beyond this, where a person is sued for infringement of the London Olympics association right, they have at their disposal only a small number of defences, namely:
a) Use by a person of his own name or address,
b) Use of indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, time of production of goods or of rendering of services, or other characteristics of goods or services, or
c) Use of a representation which is necessary to indicate the intended purpose of a product or service,
and then only provided that such use is in accordance with honest practices in industrial or commercial matters.
There are also several more specialised defences to infringement of the London Olympics association right relating to publishing, broadcasting and literary works.
The Olympics, Paralympics and London Olympics Association Rights (Infringement Proceedings) Regulations 2010, which came into force on 8 November 2010, sets out the remedies available where an infringement of the association right has been found. The court may order that an infringer erase, remove or obliterate the offending representation or, if this is not reasonably practicable, destroy the infringing goods, material or articles. If such an order is not complied with, or the court considers it likely that such an order will not be complied with, the court may order the delivery up of the infringing articles for erasure, removal or obliteration of the offending representation or for destruction.
A court may also make an order for damages, an injunction or an account of profits.
As discussed in our Autumn 2006 article, the Act was designed to protect the interests of official Olympic sponsors from "ambush marketing" by non-sponsors of the Olympic Games. However, the broad nature of the Act means that all businesses should proceed with extreme caution when considering any branding or advertising which could suggest even the remotest association with the 2012 Games.
No matter how innocent the intention may be, a business could find itself in a sticky situation through the mere mention of the Olympics. It would therefore be wise to seek legal advice regarding the proposed inclusion of any Olympic references in branding or advertising prior to making any outlay which could create, relatively speaking, an Olympic-sized problem.