Statutory protection for Games branding.

by Mark Fancourt-Smith

Two major challenges facing Olympic committees are attracting sponsors and much-needed sponsorship money, and fending off those who seek to create an association between themselves and the Olympics and its associated goodwill for free: “ambush marketing.” At past Olympic Games, the struggle has been as hard fought as any of the athletic events. Given the importance of sponsorship funding to the success of the Olympic Games, this is for good reason. The Olympic and Paralympic Marks Act, S.C. 2007, c. 25 is armed with a combination of broad prohibitions against unauthorized “association” with the Olympics, and sweeping enforcement provisions.

The central focus of the Act in this regard is found in sections 3 and 4. Section 3 prohibits the unauthorized use of Olympic or Paralympic marks, or any marks likely to be mistaken for them. Subsection 4(1) targets ambush marketing, creating a broad prohibition against promoting or otherwise drawing attention to a business in a manner likely to mislead the public into believing that its goods or services are approved, authorized, or endorsed by an Olympic organizing committee, or even that a “business association” exists between a person’s business and the Olympic Games, Paralympic Games, or an organizing committee.

In determining whether or not ss. 4(1) has been contravened, subsection 4(2) requires a court to take into account whether or not a person has used, in any language, a combination of words set out in part 1 of Schedule 3 of the Act, including:

• “Games,” “2010,” “Medals,” and “Tenth”;
• or a combination of one of those words with a word from part 2, including:
• “Winter,” “Sponsor,” “Gold,” “Silver,” “Bronze,” “Vancouver” and “Whistler.”

Should a Court find that sections 3 or 4 have been contravened, on application by an applicant authorized under the Act, it may make any order it considers appropriate. The examples provided in section 5 of the Act include relief by way of injunction and recovery of damages or profits, punitive damages, or, tellingly, an order for the publication of a “corrective advertisement.”

In terms of enforcement, the Act alters the test for an interim or interlocutory injunction sought under it, by providing that an applicant will not have to show that it will suffer irreparable harm. An authorized applicant therefore, will simply need to show an arguable case that the offending advertisement breaches sections 3 or 4 of the Act, and that the balance of convenience, irreparable harm aside, favours granting the injunction.

The Act provides strong protection for the Olympic and Paralympic marks. This protection is likely to be tested in relation to the Vancouver 2010 Olympic Games as they have been at past Olympics, and lawyers in British Columbia will see it first-hand. Approaches can be creative; for example, during the 1994 Winter Olympics, Visa aired commercials promoting its official sponsorship of the games, and the fact that American Express was not accepted anywhere in the Olympic Village. American Express promptly aired its own commercials offering the following, truthful, riposte: “If you are travelling to Lillehammer, you’ll need a passport, but you won’t need a Visa.”

Mark Fancourt-Smith is a commercial litigator at Fasken Martineau whose practice includes intellectual property litigation, trade secrets, and fraud.

This article was published in the October 2009 issue of BarTalk. © 2009 The Canadian Bar Association. All rights reserved.