Ambush Marketing – Part Three

In the last blog on ambush marketing I dealt in outline with the forms ambush marketing can take and touched on the range of devices that can be used to prevent it, and the way those devices have been specifically supplemented by legislation. In this blog I will touch in outline upon some of the ways intellectual property law can assist in combatting ambush marketing, and some of the ways in which the protection it affords might not be enough.

Let’s take an example. Say that we are the organisers of a major event, The FrontRow Legal Pie Eating World Championship. The first thing we might seek to do to avoid ambushing by association is register a trade mark for the title of the event and the event logo, on the basis that if we control that trade mark we can seek to prevent unauthorised use of the marks we have registered by organisations that have not helped to sponsor the event.

The applications we would make would probably be quite numerous. A trade mark can be registered for anything that can be represented graphically, and includes words, graphic words such as logos, mascot designs, straplines and so forth. Some of our marks therefore can be registered quite straightforwardly provided we have done the work on clearance – in other words, checking that there are no other owners’ marks in use or on the register that would be the same or similar to our mark for a similar range of goods and services. We would register those marks for the full range of goods and services to be provided as part of the event or directly in association with the event, by ourselves or our event partners. Each different mark would require a separate registration in the appropriate territorial registries – the UK, the European Community and further afield.

The first problem we may encounter relates to the event title, and the limited ability we have to register a trade mark for something as descriptive as “Pie Eating World Championship” (FrontRow is already a trade mark in its own right). A trade mark will not be granted where the mark applied for is not distinctive enough to differentiate the goods and/or services of one undertaking from those of another, and if all a mark does is describe what the product or service is, unless the mark has become distinctive because of the use made of it by the person applying before the application is made, it will not be distinctive enough to be registered.

Say we devise a name that is distinctive enough to be registered (call it “Lord of the Pies” – humour me here) and a funky logo. The logo will be a copyright work as a graphic work (although the event title will not qualify for copyright protection as a literary work), so we can prevent people copying and distributing copies of that logo or putting it on merchandise. The trade mark rights in the logo and other marks (including the event title) will only enable us to prevent some but not all unauthorised use of the mark.

We can prevent the use of the identical mark on or in relation to identical goods and services for those we have the mark registered for, but only where that affects the function of the trade mark, including the function it has of guaranteeing to the public the origin of the goods and services with us or in a way associated with us as the owner of the mark. A number of complex legal authorities beckon.

We can prevent the use of a similar mark on or in relation to identical goods and services, or a similar mark on or in relation to identical or similar goods and services, where such use in either case creates a likelihood of confusion with our goods and services, or confusion as to the origin of the offending goods and services as originating from us or from an association with us. We can also prevent (if we are considered to be a mark with a reputation) the use of an identical or similar mark on or in relation to any goods or services where that use takes unfair advantage of that reputation or is detrimental to our mark’s distinctive character or repute. A lot of tests to get through, a lot of legal authorities to consider.

Not every reference to or use of the mark therefore will be an infringement of our rights in the mark as trade mark owner, nor should it. A reference in the media to the event is not an infringement. A reference in advertising will depend very much on the nature and the context of the reference made. Our trade mark registration is a crucially important step and will have a major effect – but it won’t do everything we might want it to do to prevent use of the event name and reference to it. References can be indirect so that there is no “identical or similar mark” used; uses can be made of the mark that do not affect its function as a trade mark.

We can use our trade mark rights for a number of effective purposes and would be fools to do without them. But in order to protect a major event and its sponsors from ambush marketing we would in an ideal world need more rights we can enforce beyond those relating to trade mark infringement or copyright infringement.

In the next blog I will deal with how the London Olympic Games and Paralympic Games Act 2006 adds further rights over and above trade mark rights for the benefit of the organisers of the London Olympics.

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