PWC* has estimated that global sports sponsorship will be worth US$45.3 billion in 2015.
Australia has a long history of hosting major sporting events such as the Olympics, Commonwealth Games, Rugby World Cup, Cricket World Cup and has also put in a bid for the Soccer World Cup. For many past events the Australian government has enacted specific legislation to protect primarily sponsor investment.
With a number of these events to take place in the next 12 months the Australian government has decided to proceed with “catch all” legislation which can also be used for future events.
Protected material
The Act aims to prevent the unauthorised commercial use of certain marks and images associated with the aforementioned events for a period of time in the lead up to and during the events (Protection Period), for example, the terms CWC2015 and CRICKET WORLD TOURNAMENT SPONSOR. Commonly used words such as “cricket”, “football” and “Gold Coast” are not listed.
Other expressions used with other relevant words are prohibited during the Protection Period. For example, the expression ‘champion’ cannot be used with ‘Cricket World Cup’.
These protections also apply to use in languages other than English.
Protected images are those which relate to the major sporting event, specifically “any visual or aural representations that, to a reasonable person, in the circumstances of the presentation, would suggest a connection with the event”.
Who is affected?
The Major Sporting Events (Indicia and Images) Protection Act affects non-official partner or sponsor businesses which sell, advertise, package or otherwise promote goods or services in connection 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 Major Sporting Events (Indicia and Images) Protection Act received Royal Assent on 27 May 2014 and is effective as of 1 July 2014. This is a welcomed piece of legislation for potential sponsors due to its prohibition of the use of a major sporting event’s “protected indicia or images” for “commercial purposes”. The Act has been introduced in anticipation of ambush marketing by businesses that are not official partners or sponsors possessing the intention to increase sales or brand awareness through association with the events.
- preventing the unauthorised commercial use of protected indicia and images;
- protecting agreed words and phrases associated with the event and their uses;
- providing the remedies of are an injunction, damages, account of profits, corrective advertising and seizure of any infringing goods; and
- providing an exception for use of certain indicia and images for the purpose of the provision of information, criticism or review.
The Act is consistent with the approach taken during the Sydney 2000 Olympic Games through the Sydney 2000 Games (Indicia and Images) Protection Act 1996, and the Melbourne 2006 Commonwealth Games through the Melbourne 2006 Commonwealth Games (Indicia and Images) Protection Act 2005.
Enforcement and remedies
Part 4 of the Act sets out a framework for the seizure of imported goods using the indicia or images, similar to that which appears in the Trade Marks Act 1995 and the Copyright Act 1968. Australian Customs’ officers therefore possess the power to seize goods and forfeit them to the Commonwealth if the designated owner’s use is for commercial purposes in contravention of the Act.
Remedies for official users are an injunction, damages, or an account of profits. A corrective advertisement may also be required from the unauthorised user by the authorising body.
Any person aggrieved by groundless threats from the authorising body or an authorised user can seek a declaration, injunction, or damages from the appropriate court.
Practical meaning
If you are a non-official partner or sponsor business then you will need to ensure that you do not use the indicia or images protected under the Act unless you meet one of the specific exeptions.
If you are an official partner or sponsor business then you will need to watch for potential infringement of your intellectual property. You must also ensure compliance with Clause 16 (Register of authorised users) and make certain with the event body that your details appear on the register as an authorised user.
This article was prepared by Frances Drummond (frances.drummond@nortonrosefulbright.com / +61 2 9330 8007) of Norton Rose Fulbright’s Australia’s Intellectual property group.