* Your assessment is very important for improving the workof artificial intelligence, which forms the content of this project
Download Malaysian Legal Perspective on Ambush Marketing
Survey
Document related concepts
Youth marketing wikipedia , lookup
Marketing strategy wikipedia , lookup
Digital marketing wikipedia , lookup
Integrated marketing communications wikipedia , lookup
Advertising campaign wikipedia , lookup
Viral marketing wikipedia , lookup
Multi-level marketing wikipedia , lookup
Guerrilla marketing wikipedia , lookup
Marketing plan wikipedia , lookup
Multicultural marketing wikipedia , lookup
Direct marketing wikipedia , lookup
Marketing channel wikipedia , lookup
Marketing mix modeling wikipedia , lookup
Green marketing wikipedia , lookup
Street marketing wikipedia , lookup
Global marketing wikipedia , lookup
Transcript
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