17 Apr 2014

New legislation will protect indicia and images associated with major sporting events

by Mary Still, Timothy Webb, Sophia Haq

If you're planning to sell, advertise or otherwise promote goods or services in connection with any of the defined major sporting events, you'll need to understand the Major Sporting Events (Indicia and Images) Protection Bill 2014.

On 26 March 2014, the Australian Government introduced the Major Sporting Events (Indicia and Images) Protection Bill 2014 into Parliament, to protect the indicia and images to be used by upcoming sporting events.

The Bill currently provides special protection regarding commercial use of indicia and images connected with:

  • the Asian Football Confederation (AFC) Asian Cup 2015;
  • the International Cricket Council (ICC) Cricket World Cup 2015; and
  • the Gold Coast 2018 Commonwealth Games.

The Bill prohibits the use of a major sporting event's "protected indicia or images" for "commercial purposes", in the lead-up to, during, and immediately after the event, except by official event bodies and authorised persons. If passed, the legislation will require the authorised body for each event to establish, and publish on the Internet, a register of authorised users. The register is intended to act as a deterrent for potential infringers.

The proposed legislation aims to:

  • minimise ambush marketing;
  • protect Australia's reputation for hosting successful major sporting events;
  • increase trade and tourism opportunities for Australia;
  • maximise sponsorship revenue and therefore reduce the reliance of event bodies on government financial support; and
  • protect the investment of sponsors, and attract additional sponsors.

During the bidding process for each event, the Australian Government committed to protecting indicia and images associated with the events through special legislation. The Bill is consistent with the approach that was taken during the Sydney 2000 Olympic Games and Melbourne 2006 Commonwealth Games, through the Sydney 2000 Games (Indicia and Images) Protection Act 1996 and the Melbourne 2006 Commonwealth Games (Indicia and Images) Protection Act 2005, respectively.

A key difference is that the new Bill relates to multiple events, and has been drafted in such a way that it may later be amended apply to additional events.

The body of the Bill sets out the restrictions in general terms.

The three Schedules to the Bill each identify a "major sporting event" to which the Bill applies, the protected indicia, and the protection period for that event.

The Explanatory Memorandum also contemplates the possibility of further events later being added through amending legislation.

Protected indicia and images

The Schedules to the Bill contain an agreed list of protected words and combinations of words for each event. These lists were developed in consultation with the event bodies and IP Australia.

Key phrases include "AFC Asian Cup," "ICC Cricket World Cup" and "Gold Coast 2018 Games". Variations and abbreviations such as "CWC15" and "GOLDOC" have also been included. Words of common use such as "cricket", "football" and "Gold Coast" have not been listed.

Unauthorised commercial use of protected words and indicia in languages other than English is also prohibited.

The Bill does not contain a prescribed list of protected images. Rather, the phrase is defined as "any visual or aural representations that, to a reasonable person, in the circumstances of the presentation, would suggest a connection with the event".

Use for commercial purposes

The Bill sets out a clear test for "commercial purposes". A person (the user) is taken to use protected indicia or images for commercial purposes if:

  • the user causes the event's protected indicia or images to be applied to their goods or services; and
  • the application is for the primary purpose of advertising or promoting, or enhancing the demand for, the goods or services; and
  • the application would suggest, to a reasonable person, that the user is or was a sponsor of, or is or was the provider of other support for:

– the major sporting event; or
– any other event arranged by an event body for the major sporting event in connection with the major sporting event.

The application of protected indicia or images for the primary purpose of advertising, promoting or enhancing the demand for the goods or services, will be prima facie sufficient to suggest a sponsorship or the provision of support.

However, the use of protected indicia or images for the primary purpose of criticism or review, or providing information (including through reporting news and presenting current affairs) will not by itself be considered sufficient to suggest the existence of a sponsorship arrangement, or the provision of other support. This includes criticism or review in writing, broadcast, social media or any other media.

A secondary user will also use protected indicia or images for commercial purposes if they deal with goods or services that have been used by a first user in the manner described above in certain ways – that is, if the secondary user:

  • supplies or offers to supply the goods or services;
  • exposes the goods for supply by themselves; or
  • keeps the goods for supply by themselves or by another person.

Where the first user is an authorised user, the second user (such as a retailer or distributor) will not need independent authorisation to deal with the goods or services.

Remedies

If the prohibition is infringed, official users may apply for an injunction, damages, or an account of profits. In addition, the authorising body for the event may apply for an order requiring the unauthorised user to publish a corrective advertisement.

Official users must be careful not to make groundless threats of bringing action for a remedy. The Bill safeguards against this by permitting any person aggrieved by such threats to seek a declaration, injunction, or damages from the appropriate court.

Seizure of goods

The Bill sets out a framework for the seizure of goods which is similar to that which appears in the Trade Marks Act 1995 and the Copyright Act 1968.

An official user may give the Chief Executive Officer of Customs a written notice objecting to the importation of goods that have indicia or images applied to them, where the designated owner of the goods is not an authorised user.

Where there is a notice of objection in force, and it appears that the designated owner is not an authorised user, the Customs CEO must seize the goods unless he or she has reasonable grounds for believing that the use of the indicia or images would not breach the prohibition contained in the legislation.

Practical implications

If the Bill is passed, its provisions must be carefully considered by any person or business intending to sell, advertise or otherwise promote goods or services in connection with any of the defined major sporting events. In particular:

  • authorised users should be aware of the range of remedies that are available to them to combat unauthorised commercial activities; and
  • unauthorised users will need to review their business plans to ensure they do not contravene the legislation by using protected indicia and images, and therefore expose themselves to potentially significant legal liability.

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Clayton Utz communications are intended to provide commentary and general information. They should not be relied upon as legal advice. Formal legal advice should be sought in particular transactions or on matters of interest arising from this communication. Persons listed may not be admitted in all States and Territories.