Major Sporting Events (Indicia and Images) Protection Bill 2014

The Major Sporting Events (Indicia and Images) Protection Bill 2014 (Bill) was introduced to Parliament on 26 March 2014. The purpose of the Bill is to provide protection to the following major sporting events which will be held in Australia in the next few years:

• Asian Cup 2015 (January 2015);
• Cricket World Cup 2015 (February and March 2015); and
• Gold Coast 2018 Commonwealth Games (April 2018).

The Bill seeks to prevent the unauthorised commercial use of certain indicia and images associated with these events. The use of indicia and images in such a fashion is often referred to as ‘ambush marketing’.

The relevant explanatory memorandum states that the Bill is required because not all of the protected indicia and images are capable of being protected as marks under the Trade Mark Act 1995 (Cth) and the Copyright Act 1968 (Cth).

Legislation similar to the Bill is now a condition to the award of the right to host major events. As such, it is likely that the Bill will be passed by Parliament in substantially the same form as the Bill. Similar legislation exists more generally in relation to Olympic indicia and insignia¹ and was passed for the Sydney 2000 Olympic Games² and the Melbourne 2006 Commonwealth Games.³

The new legislation will sit alongside existing legislation relating to major events in Australian States.⁴

Protected indicia and images

The particular indicia and images which are protected for each of the three events is set out in Schedules 1 to 3 of the Bill and includes single words or expressions such as ‘AFC Asian Cup’, ‘Asian Cup’, ‘CWC2015’, ‘ICC Cricket World Cup’, ‘Commonwealth Games’ and ‘GC2018’ as well combinations of terms such as ‘Commonwealth Games’ and ‘Bronze’ or ‘Cricket World Cup’ and ‘broadcaster’.

There are not protected images listed in the Bill. Instead the Bill provides more generally that protected images are “any visual or aural representations that, to a reasonable person, in the circumstances of the presentation, would suggest a connection with the event”.

Prohibition on use of protected indicia and images

The key operative provision of the Bill is section 16, which prohibits a person from using a major sporting event’s protected indicia or images for commercial purposes during the event’s protection period.

This provision is almost identical to the corresponding provisions of the legislation enacted for the Sydney 2000 Olympic Games and the Melbourne 2006 Commonwealth Games.⁵

Actions made out under the Bill still require proof of many of the same elements required under existing laws such as the Australian Consumer Law and the tort of passing off. While the Bill may therefore not extend beyond the scope of rights under existing laws, it does arguably make these rights clearer and easier to enforce.⁶

‘commercial purposes’

Section 12 of the Bill sets out the circumstances in which the use of a major sporting event’s protected indicia or images will be taken to have been used for ‘commercial purposes’. These are

1. the indicia or images are to be applied to the user’s goods or services;
2. the application is primarily for the purpose of advertising or promoting, or enhancing the demand for, the foods or services; and
3. the application would suggest, to a reasonable person, that the user is or was a sponsor of, or is was the provider of other support for the major sporting event or any other event arrangement by an event body for the major sporting event in connection with the major sporting event.

General associations with the protected indicia and images are unlikely to be found to show a user of the indicia or image was a ‘sponsor’ or ‘provider of other support’. For example, in a case arising out of the Sydney 2000 Olympic Games, the registration of the trademark ‘The Olympic’ in relation to footwear was held not to breach the relevant provision relating to commercial purposes.⁷  It was not enough to simply suggest some vague, undefined connection with the Olympic Games or the Olympic movement generally, instead a precise association with the Sydney 2000 Olympic Games was required.⁸

Similarly, in a case in which the more general Olympic legislation was applied, the Australian Olympic Committee objected to the registration of trade marks comprising the words ‘Olympic Banking System’ in relation to banking, financial and related computer technology services.⁹  In that case the Hearing Officer was not satisfied that a reasonable person would believe that the applicant was a sponsor, or provided sponsor-like support, to the Olympics.¹⁰  There needed to be more than simply the use of the word ‘Olympic’, especially where other words used in the trade mark had nothing to suggest Olympic sports or activities.¹¹

The Bill does however contain a presumption in section 13 which was not in the legislation which applied in the above two examples. This presumption provides that the application of relevant indicia or images by a person for the primary purpose of advertising or promotion, or for the primary purpose of enhancing the demand for goods or services, is prima facie sufficient to suggest the existence of a sponsorship arrangement or of other support. This provision operates to effectively reverse the onus of proof and potentially expands the protection afforded under the Bill to cover more sophisticated ambush marketing strategies, although the relevant marketing would still have to refer to a protected indicia or image.

Remedies

If the prohibition in section 16 of the Bill is contravened, official users of the protected indicia and images can seek an injunction, damages or an account of profits. An order can also be sought requiring a person to publish a corrective advertisement.

These remedies are in addition to remedies available under other Commonwealth, State or Territory laws (although if an action for damages or account of profits has been brought under a State or Territory law the official user may be prevented from bringing or continuing an action under the Bill).

Further, an aggrieved person may seek a declaration, injunction or damages if an official user makes a groundless threat to make an application or bring an action under the Bill.

Commentary

The Bill provides official users and events with some addition statutory protections against various types of marketing and advertising practises. Once the Bill comes into force (which is expected shortly) persons who are not official sponsors or partners of the event but are considering using any of the protected indicia or images will need to carefully review their advertising and sponsorship material to ensure they do not contravene the Bill.

¹ Olympic Insignia Protection Act 1987 (Cth).

² Sydney 2000 Games (Indicia and Images) Protection Act 1996 (Cth).

³ Melbourne 2006 Commonwealth Games (Indicia and Images) Protection Act 2005 (Cth).

⁴ See for example, Major Sporting Events Act 2009 (Vic); Major Events Act 2009 (NSW); Major Sports Facilities Act 2001 (Qld); Major Events (Aerial Advertising) Act 2009 (WA); Major Events Act 2013 (SA).

⁵ Sydney 2000 Games (Indicia and Images) Protection Act 1996 (Cth) s 11; Melbourne 2006 Commonwealth Games (Indicia and Images) Protection Act 2005 (Cth) s9.

⁶ See the comments in IP Australia, Department of Communications, Information Technology and the Arts, Ambush Marketing Legislation Review (2007), 59.

⁷ Australian Olympic Committee v Baxter & Co Pty Ltd (1996) 36 IPR 621.

⁸ Australian Olympic Committee v Baxter & Co Pty Ltd (1996) 36 IPR 621, 632.

⁹ Australian Olympic Committee v ERI Bancaire Luxembourg SA (2006) 69 IPR 135.

¹⁰ Australian Olympic Committee v ERI Bancaire Luxembourg SA (2006) 69 IPR 135,140.

¹¹ Ibid.