Download Malaysian Legal Perspective on Ambush Marketing

NEWSLETTER
VOL 7 NO 3.0 SEPTEMBER 2008
KDN NO. PP 12544/10/2008
INTELLECTUAL PROPERTY
Malaysian Legal Perspective on Ambush Marketing
IN THIS ARTICLE, ANGUS TIONG PROVIDES AN INSIGHT ON THE LEGAL ISSUES RELATING TO
AMBUSH MARKETING.
Definition
The term “Ambush Marketing” refers to a practice where someone is trying to associate his trade or
business with an event, without authorization from the event organizer. Steps are always taken to
eliminate the activities of ambushers as it erodes the integrity of major events and may potentially
diminish the benefits to official sponsors, the real supporters of such events.
Ambush Marketing happens where the non-sponsor gives the impression of being an official sponsor
by using words or symbols associated with the event. Another scenario of Ambush Marketing is
where the ambusher tries to ride on the goodwill of the major events by advertising near event
venues giving the public the impression that they are the official sponsors.
In recent years, the official sponsors and organizers are increasingly looking for protection and have
started to take the practice of Ambush Marketing very seriously. For example, during Football World
Cup in Germany in 2006, Dutch brewer Bavaria had given away orange lederhosen bearing its logo to
hundreds of Dutch supporters attending the country’s match against the Ivory Coast. Since
Budweiser was the official beer, stewards at the match ordered the fans to remove the offending
items before letting them in, forcing some supporters to watch the match in their underpants.
Importance for sporting events to have specific laws on Ambush Marketing
It is important for sporting events to have specific laws on Ambush Marketing in order to attract
sponsors for major events such as the Olympics, Commonwealth Games, F1 Racing or The Football
World Cup. Specific legislation on Ambush Marketing will ensure that the interests of sponsors are
protected.
However, the biggest problem of Ambush Marketing is that most countries do not have specific laws
on Ambush Marketing leaving the scope of existing laws rather unclear.
In Australia, the organizing committee for the Sydney 2000 Olympic Games successfully lobbied for
the passing of the Sydney 2000 Games (Indicia and Images) Protection Act 1999. The Act sets a good
precedent to other countries and was a right move to reduce the incidence of ambushing at the 2000
Olympic Games.
Although there is no specific legal protection against Ambush Marketing in Malaysia, event
organizers and sponsors could try to fight Ambush Marketing through the use of other legal
principles.
Unfair Competition
Malaysia is a member of two principal conventions relating to trade marks: the Paris Convention for
the Protection of Industry Property and the Agreement on Trade-Related Aspects of Intellectual
Property Rights, commonly known as TRIPs Agreement.
The TRIPs Agreement is one of the agreements concluded in the attempt to bring intellectual
property rights into the world trading system. Signatories to the TRIPs Agreement who are
developing countries were given a time period of five years, that is until 1 January 2000 to apply the
provisions of TRIPs Agreement.
Although Malaysia does not have specific legislation on unfair competition, we may rely on Article
10bis of the Paris Convention which provides that “the countries of the Union are bound to assure to
nationals of such countries effective protection against unfair competition”. An act of unfair competition
is defined as “any act of competition contrary to honest practices in industrial or commercial matters”.
The TRIPs Agreement however does not contain provisions on unfair competition law. It only
provides that state members shall comply with certain provisions of the Paris Convention, including
article 10bis.
Common law of Passing off
The common law tort of passing off may be used to protect the goodwill developed by an event
organizer in connection with a sporting event. The conditions are:
(1) the presence of goodwill attached to goods and services in the mind of the public by
association with the identifier used by the event organizer;
(2) a misrepresentation by the alleged infringer likely to lead the public to believe that the
goods and services offered are the goods and services of the event organizer; and
(3) that the event organizer is likely to suffer damage by reason of the misrepresentation by the
alleged infringer.
Protection against Ambush Marketing under Trade Mark Law
When Ambush Marketers refer to competitors’ trade marks, he will be liable for Trade Mark
infringement. In such cases, the likelihood of confusion is obvious and protection is straightforward.
However, if Ambush Marketers refer to the event itself, possibly to the name of the event organizer
then protection under trade mark law may be weaker.
In order to seek protection under Trade Mark laws, the first thing an event organizer must show is
distinctiveness in relation to trade marks issued by event organizations. This may be a problem as
more often than not, the trade mark will be descriptive of the event and therefore not distinctive. For
example, despite the monopoly of FIFA over what event, the relevant public would see in the
registered trade mark only reference to the event and not to the source.
Secondly, an event organizer must establish likelihood of confusion amongst the public. As a result of
the specialty principle, likelihood of confusion does not only require similarity between the trade
mark and the contested sign, but similarity between the goods or services at stake. Protection will
only be granted when there is full identity between the distinctive trade mark on the one hand and
the goods and services on the other hand. Unless it is registered in all classes, as it is now often the
case, these products or services for which the trade mark of the event organizer are registered, are
unlikely to be similar to those of the Ambush Marketer. As a result, a court may find that there is no
likelihood of confusion between an Ambush Marketing campaign and the trademark of the event
organizer.
Malaysian Legal Perspective on Ambush Marketing
2
Lastly, in order to seek absolute protection under Trade Mark laws, event organizers have to file Trade
Mark application in almost all classes. For examples, “London 2012” was registered in the UK and as a
Community Trade Mark in every single class.
Famous Trade Mark
Under the Trade Marks Act 1976 (“the Act”), a famous mark is protected in the form of defensive
registration. Under Section 57 of the Act, the proprietor of an “invented word” trade mark that has
become so well-known as regards any goods or services in respect of which it is registered and in
relation to which it has been used that the use of that trade mark in relation to other goods or
services would be likely to be taken as indicating a connection in the course of trade so as to cause
confusion, may register that trade mark for other goods or services, even though he does not use or
propose to use it. The problem is that more often than not the name of a mega event does not qualify
as an “invented word”.
Article 16(3) of the TRIPs Agreement makes it mandatory for WTO Members to grant protection to
well known trade mark within the meaning of Article 6bis of the Paris Convention, beyond the goods
or services for which the trade mark was registered, provided that use of the trade mark in relation to
those goods or services would indicate a connection between those goods or services and the owner
of the trade mark and provided that the interest of the owner of the registered trade mark is unlikely
to be damaged by such use. Article 16(3) does not indicate what level of fame is required, but makes
the “connection” a condition to its application. The precise meaning of this concept is unclear
though.
However, most of the authorities found that trade marks registered by sport organizations had a
reputation extending the scope of the protection beyond registered goods or services.
Copyright
Protection against Ambush Marketing practices is also available under copyright law when Ambush
Marketers copy the official logo of the event or event organizer, the official mascot of the event, the
emblem, the anthem or other possible pieces of music composed in relation to the event.
Event Organizers and sponsor’s roles on protection against Ambush Marketing activities
Event organizers and sponsors also play a very important role in curbing the problem caused by
Ambush Marketing. For example, sponsors may use event regulations and participation agreements
to restrict what athletes may wear or carry when they compete. Also, spectator ticketing policy may
be followed by preventing people from bringing certain items into the viewing areas.
A good example in Malaysia will be the AIGP World Cup of Motor Sport event that was held in Sepang
International Circuit, Malaysia where clause 14 of the Ticket Terms and Condition stated that “ …the
Ticket Holder shall not engage in any form of Ambush Marketing (Ambush Marketing is an activity by a
party which utilizes the publicity value of an event without having any official involvement or connection
with the event) and shall not breach or infringe the rights of any sponsors, Suppliers, broadcasters or other
parties commercially associated with the event or the venue, nor conduct any unauthorized promotions or
other commercial activity”.
Conclusion
Since Ambush Marketing activities diminish the value of a world event’s commercial integrity and will
seriously damage event organizers and sponsors’ investments, protection against Ambush Marketing
activities need to be seriously considered to counter the threat of Ambush Marketing.
Malaysian Legal Perspective on Ambush Marketing
3
ANGUS TIONG
INTELLECTUAL PROPERTY & TECHNOLOGY PRACTICE GROUP
For further information concerning Intellectual Property matters, please contact
Wong Sai Fong
[email protected]
Karen Abraham
[email protected]
Malaysian Legal Perspective on Ambush Marketing
4