‘Ambush marketing’ is a term coined in the marketing world to describe advertising that creates an association between a major sporting event and a particular product, service or business – without the event organizers being able to benefit from the usual lucrative sponsorship agreement. Traditional IP laws have not been much use in dealing with the more sophisticated forms of ambush marketing. Trademark law, for example, would prevent a company from using the trademarks of a major sporting event without consent (in the form of a sponsorship agreement), but clever ambushers do not need to use these trademarks to create associations with a high profile event. For example, when Germany hosted the FIFA World Cup in 2006, Air Emirates was the official airline of the event. Its competitor, Lufthansa, painted the pattern of soccer balls on the nose cones of its airplanes. The association was created without use of anyone’s trademarks. There are many other .

Event organizers – keen to extract the maximum in sponsorship revenues from sponsors – have long struggled against ambush marketing. There are at least two main types of ambush marketing, and a third is also gaining recognition. These are intrusion, invasion and association.

Intrusion and invasion occur when the trademarks of non-sponsors enter the spaces dedicated to the major sporting event, preserving spatial exclusivity for event sponsors. Intrusion occurs when branded items enter event venues on the person (or vehicles) of attendees. Invasion involves a more deliberate plan – perhaps by a group of attendees and perhaps organized by a non-sponsor company. A notorious example is that of the to a FIFA event in South Africa in 2010. Intrusion and invasion have long been addressed through ticket clauses that prevent ticket holders from wearing clothing bearing the visible trademarks of non-sponsors, and from bringing into the venue products (such as bottled water or soft drinks) bearing the trademarks of non-sponsors. The Pan Am/Parapan Am Games 2015 are no exception. Ticket specifically prohibit ambush marketing in clause 11(c) (“whether by invasion, intrusion or otherwise”), There are also restrictions on bringing food or drink into the venue. While this is in part to push attendees to purchase such items from on-site vendors, it also limits the possibility of non-sponsor items from entering TV camera sight planes. There are also separate restrictions imposed by organizers on athletes in terms of how visible logos can be on sporting wear and other equipment they use. Consistent with our wired age, the of the Pan Am/Parapan Am Games 2015 website also prohibit use of the website or any official social media sites for ambush marketing.

Ambush marketing by association is harder to deal with, particularly where it does not infringe existing IP laws. Major sporting event organizers (the IOC, FIFA, etc) have begun to pressure countries that bid for their events to put in place legislation to protect not only against ambush marketing by association but also ambush marketing by intrusion. Some countries have introduced event-specific laws; others, such as New Zealand, have introduced that can be applied to any event designated as a major event. These laws make it illegal to create an “association” with an event. Olympic-related legislation has tended to do this by, among other things, creating lists of words that, if used by advertisers, are considered problematic. In unitary states, such laws have also provided protection against ambush marketing by intrusion. Whereas previously event organizers could only control private spaces associated with the events through ticket clauses and other contractual agreements, such laws controversially restrict the use of non-sponsor trademarks and advertising in wide swaths of public space, including airports, public transit lines, public parks and streets near event venues.

Canada enacted its first anti-ambush marketing law for the 2010 Vancouver Winter Games. The commitment to do so was made to the IOC in the bid documents. The (OPMA) created a special status and special protection for Olympic and Paralympic marks. It also created a separate recourse against ambush marketing by association. Because Canada is a federal state, and the provinces have jurisdiction over property and civil rights, the law could not address ambush marketing by intrusion into the spaces around Olympic venues. This was done by Vancouver City by-laws, a number of which were by the B.C. Civil Liberties Association. As with other legislation of this kind, the statute created lists of words, the use of which were considered suggestive of ambush marketing. These included common words such as: Vancouver, twenty-ten, 2010, Whistler, gold, silver, bronze, winter, and so on.

Legislating against ambush marketing is of questionable value. Action taken by event organizers against small or local businesses (or women wearing orange dresses) can create a sense of public outrage that is perhaps more harmful to the goodwill associated with the event than ambush marketing itself. Further, as Canada’s bold Olympic ambushers illustrated in 2010, associations can be created by encouraging the public to celebrate “Canada”, and it is difficult to see how a major sporting event can claim any form of monopoly over displays of national pride. Anti-ambush marketing legislation may also raise interesting freedom of expression issues so far as it relates to small and local business making reference in their advertising to events taking place in their communities. Of course, small businesses generally do not have the resources to fight legal battles over marketing; once they receive a cease and desist letter from event organizers, they tend to cease and desist. High profile competitors of event sponsors, on the other hand, have legal departments at their service to vet their advertising campaigns to ensure they fit comfortably within legislative loopholes. The effectiveness of such laws is open to question; their overall impact may even be negative.

In Toronto’s bid to host the Pan Am/Parapan Am Games it promised to ask the federal government to extend the application of the OPMA to the Pan Am/Parapan Am Games (see , page 189). In other words, as with other major events, the promise of legislation to address ambush marketing was made a part of the bid. In this case, the extension has not materialised. Instead, the organizers have contented themselves with a series of official marks (a special category of trademarks available to “public authorities” in Canada). As far as local businesses are concerned, the organizing committee has issued on how to reference (or not reference) the games.

The approach seems far lighter than recent examples, although the Pan Am/Parapan Am Games are lower profile than the Olympics or FIFA events. But perhaps it is evidence of an important lesson learned: that there are limits to the use of law and legal institutions to address problems such as ambush marketing.

is the Canada Research Chair in Information Law at the University of Ottawa. Some of her writing on ambush marketing and the law can be found , and .

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The England and Wales High Court (Chancery Division) that when retailer M&S used competitor Interflora’s trade-marked company name in M&S’ Google Adword keyword purchase, they infringed the trade-mark.

To briefly explain the digital function at issue, M&S included the keyword “Interflora” in their list of purchased Google Adwords. Thus, when Google search engine users typed in the search term “Interflora”, the results included in the “sponsored links” section an ad for M&S.

The Honourable Mr. Justice Arnold made clear that the use of the trade-marked word alone was not sufficient to justify trade-mark infringement, but this threshold was met as part of a larger internet advertising scheme to confuse customers into thinking that Interflora was part of or somehow related to M&S.

As Justice Arnold wrote,

M & S advertisements which are the subject of Interflora's claim did not enable reasonably well-informed and reasonably attentive internet users, or enabled them only with difficulty, to ascertain whether the service referred to in the advertisements originated from the proprietor of the Trade Marks, or an undertaking economically connected with it, or originated from a third party. On the contrary, as at 6 May 2008, a significant proportion of the consumers who searched for ‘interflora’ and the other Signs, and then clicked on M & S's advertisements displayed in response to those searches, were led to believe, incorrectly, that M & S's flower delivery service was part of the Interflora network. Thus M & S's use of the Signs had an adverse effect on the origin function of the Trade Marks. [Editor's note: bolded highlights are my own]

The High Court ruling means that M&S “Interflora” in future Google AdWord purchases. It also means that companies – especially in the European Union (EU) – would be wise to avoid purchasing competitors' trade-marked terms if the subsequent sponsored links do not clearly separate the trade-marked search term from the subsequently advertised sponsored link for fear of similar litigious reprisal.

We at IPilogue have been this specific flower titan legal battle as well as other Google AdWord verdicts around the world.

of the key decisions in the Google Adwords space in Canada and across the world provides a chronological perspective to the legal community’s coming to terms with this new digital disquiet.

Summary

A consensus seems to be emerging in Canada and elsewhere. Outright use of a competitor’s trade-mark in a Google AdWord purchase is not an infringement. It’s the further attempt to mislead customers by posing as or related to that trade-marked competitor. Put another way, the only arguable safe place to use a trade-mark that you don’t own is in the AdWord purchase itself – use it anywhere further in the advertising process, for example in the sponsored ad listing or the site that the sponsored ad links to, and you’re liable to get into hot water.

Commentary

From my perspective, the most fascinating part of the debate has got to be Google’s play to position itself as the neutral, non-liable service provider. Given the recent decision by the Australia court – and if we think of the Paris court decision as a bit of an outlier – most courts seem favourable to Google’s interpretation of their role.

My ongoing question to the Google public relations team – whether we’re talking AdWords or or the issues – is simple. Just because you’re working within the letter of the law, does that mean it’s the right course for your company?

My humble conclusion is that this isn't the case.

Squeezing out every last AdWord dollar at the expense of ugly legal battle headlines and general disappointment by the members of the business community who value their trade-marks is, in my opinion, not worth it in the long run. A company’s reputation and goodwill are valuable. Google has always been rich in both, so it probably has no idea what it looks like to wear down either. With Google’s current path of profits before public relations, the company may very well find out.

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As this chapter will show, the case of fake Beijing Olympics merchandise is rather curious. Even though there undeniably is a significant reduction of this merchandise in Beijing and other major cities during the Olympic Games, fake merchandise was widely present in other parts of the country. To a large extent, the presence of fake Olympic merchandise has shown that the challenge of confronting counterfeiting in China is more a reality than an excuse. It also provides an instructive example for understanding what the Chinese government can and cannot do in its effort to combat massive counterfeiting, the necessary complements for success, and the remaining challenges concerning efforts to protect trademark rights in such a large, complex, and highly populous country.

This chapter begins by describing the measures that the Chinese government and the Beijing municipality had taken in the run-up to the Beijing Olympics. It then explains why the case of fake Beijing Olympics merchandise provides an instructive example of the challenges to combating massive counterfeiting in China. In particular, this chapter explains the local protectionism problem, the need for both the government will and the people’s will, and the inevitable trade-offs concerning the use of enforcement resources. The chapter concludes with some lessons on the future protection of trademark rights in China.

Featured here is an abstract of a paper by , IP Osgoode Research Affiliate, Kern Family Chair in Intellectual Property Law and Founding Director of the Intellectual Property Law Center at Drake University Law School. Born and raised in Hong Kong, Professor Yu is a leading expert in international intellectual property and communications law. He also writes and lectures extensively on international trade, international and comparative law, and the transition of the legal systems in China and Hong Kong. The full article can be found .

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On September 20, 2011, the General Court of the European Union its to refuse the registration of a Community trademark for the for the former Union of Soviet Socialist Republics (USSR) coat of arms, upholding the previous ruling by the Appeal Board. The Court held that the proposed mark was a ‘symbol of despotism’, and offensive to Hungarian legislation.

At the heart of the appeal was the interpretation of section 7 ‘Absolute Grounds for Refusal’ - specifically subparagraph 7(1)(f) and subsection 7(2) - of the on the Community trade mark.

The applicant, Couture Tech Limited - a company registered in the British Virgin Islands and affiliated with a Russian designer - applied to register the USSR coat of arms with the Community trademark office.

Subparagraph 7(1)(f) of the Regulation provides that “trade marks which are contrary to public policy or to accepted principles of morality” are not registrable. In this case, the applicant argued that “unlike the swastika, the political connotation of the coat of arms of the former USSR has been diffused and transformed into a provocative one, connected with the concept of the avantgarde, so that the mark applied for has acquired ‘a new distinctiveness’”. Upholding the OHIM Court of Appeal's findings, the General Court declared that the mark had not been sufficiently “transformed” or “diffused” to be measured as anything other than a political symbol.

In addition, the Court found that pursuant to subsection 7(2) of the Regulation, it was sufficient that the symbol conflicted with the legislative policies of a single Member State. In the present case, the mark was deemed contrary to section 269/B, Law No IV of the 1978 which considers it an offense to “distribute, use in public or publicly exhibit …the hammer and sickle, the five point star or any other symbol representing one of those signs”. The Court did note however that although the national laws of the Member States are not followed by or binding on the OHIM, the evidence could be used to assess how the signs are perceived by the relevant public.

Morality and public order are also grounds for trademark refusal in Canada and the United States. In Canada, for example, registration can be denied under subparagraphs 9(1)(j) and 14(1)(c) of the . Subparagraph 9(1)(j) is an absolute prohibition on adoption stating that “no person shall adopt in connection with a business, as a trade-mark or otherwise” (as distinct from registration), any mark likely to resemble “any scandalous, obscene or immoral word or device”. In her recently published treatise on the subject, , Canada Research Chair in Information Law and Professor at the University of Ottawa, discusses the application of this provision, noting that it has “received little attention” by the courts (Scassa, 154). Further, Professor Scassa observes that although the has published an aid to help examiners apply the criterion of subparagraph , there is “a great deal of discretion” available in evaluating the bases for objection. Examples of these guidelines are:

“A scandalous word or design is one which is offensive to the public or individual sense of propriety or morality, or is a slur on nationality and is generally regarded as offensive.

A word is obscene if marked by violations of accepted language inhibitions or regarded as taboo in polite usage.

A word or design is immoral when it is in conflict with generally or traditionally held moral principles.”

While subparagraph 9(1)(j) applies to domestic marks, subparagraph 14(1)(c), prohibits the registration of existing marks that have been registered abroad. Subparagraph 14(1)(c) is triggered if the trademark “is not contrary to morality or public order…” in Canada. The Trademark Examination Manual remains silent on this provision.

In the United States, of the serves to prohibit the registration of trademarks that are “immoral, deceptive, or scandalous matter or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute…”. This provision provides for an absolute bar to registration, not adoption like in the Canadian laws. Like the Canadian Act, the proposed trademark will be opposed to if it is found to be offensive to the public. The US guideline for the public is “substantial composite of the general public”, the criteria for which was articulated by the United States Court of Appeals for the Federal Circuit in . In this case, a majority overturned the decision of the Board for refusing to grant standing to Ritchie to oppose the registration of the marks “O.J. Simpson”, and “The Juice” for a variety of goods.

In sum, the purpose of prohibiting trademark registration for marks that are perceived to be immoral or scandalous is similar across the various jurisdictions even though the approaches vary. In light of the recent refusal of the General Court to grant protection to the coat of arms, it will be interesting to see whether or not Couture Tech Limited will use it regardless, or attempt to register it elsewhere.

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On June 27, 2011, the tobacco giant issued a announcing its decision to commence legal action against Australia over which, they argue, illegally diminishes the value of their trade-marks.

The pending legislation, referred to as the Tobacco Plain Packaging Bill 2011, would require tobacco companies to adopt a standardized form of packaging for their products. The legislation prohibits companies from printing logos, promotional text or colorful images on cigarette packages. Instead, brand names must be displayed in a prescribed font, colour and position, and each package must contain of illnesses caused by smoking.

Philip Morris Asia, which owns the Australian Philip Morris Ltd., argues that��“the forced removal of trade marks and other valuable intellectual property” from cigarette packaging is “an expropriation of Phillip Morris’ investments” without fair compensation and therefore violates Article 6 of the (“AHBIT”), which protects investments from each country in the other’s territory. , a spokesperson for Philip Morris, the “plain packaging would severely diminish the value of the company’s trade-mark” as branding is “one of the absolute key valuable assets…(that)…helps us compete (and) distinguish our products.” As such, commentators predict that Philip Morris will seek monetary compensation for the loss incurred by the new legislation and an injunctive remedy that requires Australia to suspend operation of the law after it comes into force.

Although multilateral treaties such as TRIPS prohibit non-state actors from launching claims against state parties, explains that bilateral investment treaties such as AHBIT enable non-state actors to bring claims against a state party who breaches its treaty obligations. Therefore, Philip Morris has the requisite standing to launch its action.

Australian health minister, , has expressed confidence that the lawsuit can be successfully defended on the grounds of public health. Professor Kurtz concurs, noting that international law has supported a public health exception in multilateral treaties. For instance, the WTO contains an that allows states to pass regulations for public health purposes. While there are no equivalent clauses in the AHBIT, Kurtz asserts that “this does not necessarily mean that Australia’s proposed scheme will be found to breach the protections in the BIT.” He points to a number of cases (such as the 2005 NAFTA case of ) where states have “regulated for legitimate health purposes and succeeded in their defence of an investor-state arbitral claim.”

In my view, Australia’s proposed legislation would have troubling implications for free-speech and intellectual property rights. In this case, the Australian government has attempted to preserve Philip Morris’ trade-mark by maintaining it on the registry while preventing the company from using the trade-mark in the Australian marketplace. This course of action threatens to undermine the utility of the registry as the mechanism through which trade-marks are commercialized. Furthermore, the legislation restricts commercial expression beyond what is commercially reasonable, as it prohibits virtually all design elements that would enable a consumer to distinguish between competing products.

Unfortunately, the outcome of the dispute will not be known for some time. According to the Arbitration Rules of the United Nations Commission on International Trade Law, a three-month negotiation session between Australia and Philip Morris must occur before an arbitration proceeding can commence.

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Vancouver-based yoga sportswear company Lululemon , just in time for the 2010 Olympics. The new line of sweatshirts, tuques, and t-shirts features the colours of Canada, the United States, Germany and Sweden and is cheekily titled the “Cool Sporting Event That Takes Place in British Columbia Between 2009 & 2011 Edition.” Though clearly intended to cash in on the upcoming Olympics, VANOC has signaled that it does not intend to pursue legal action against Lululemon. VANOC did, however, condemn the new line as disappointing and poor sportsmanship. It appears that through some clever maneuvering Lululemon has successfully slipped through the “ambush marketing” provisions of the [OPMA].

Ambush marketing refers to the practice of non-official sponsors of large events creating associations between themselves and the event through clever marketing (much to the chagrin of official sponsors who shell out big bucks for those exclusive rights). Unlike traditional common law "passing off" cases where a manufacturer confuses and misleads consumers as to the source of its goods, with ambush marketing the ambusher trades under their own name but creates confusion as to whether they are��associated with��the event or not. For the 2010 games the Hudson’s Bay Company is the official clothing sponsor and has the contract to design, market, and sell all the��official Canadian��Olympic gear.

The leading case on ambush marketing in Canada is NHL v. Pepsi (1992), 92 D.L.R. (4th) 349, 42 C.P.R. (3d) 390 (B.C.S.C.), aff'd (1995), 122 D.L.R. (4th) 412, 59 C.P.R. (3d) 216 (B.C.C.A.). The NHL had signed an exclusive marketing deal with Coca-Cola where Coke would be the sole soft-drink sponsor for the Stanley Cup Playoffs. However, through a bit of maneuvering Pepsi secured TV ad space during the playoffs and launched its own playoff hockey-themed advertising campaign (featuring Don Cherry, no less). The BC Superior Court held that Pepsi had not committed a passing off, nor had it committed various other economic torts. The court noted that Pepsi had included a disclaimer in all of the ads, and that the NHL was in some sense the author of its own misfortune when it failed to tightly control its TV advertising. It appears therefore that ambush marketing of this sort is not typically illegal in Canada.

But that’s not the end of the story so far as Olympic merchandising goes. In 2007 Parliament passed the OPMA, an act which grants a kind of “super official mark” status to the Olympic marks, providing greater protection than even what is offered for Government of Canada marks. The OPMA was covered previously in a , as well as in University of Ottawa law Professor Teresa Scassa’s 2008 article “” (available with QuickLaw account). The strong IP protection in the OPMA was essentially part of the deal Canada made with the IOC when Vancouver was awarded the Olympics, and all the other recent Olympic countries have enacted similar legislation.

Section 4(1)(b) of the OPMA (the ambush marketing provision) makes it illegal to mislead the public into believing that a business association exists between a non-sponsor company and the Olympics. It is possible that VANOC could use this section to get an injunction against Lululemon, but they evidently have decided not to go this route. Perhaps this is because Lululemon’s carefully drafted clothing line avoids using any of the Olympic marks, and through its smart alecky branding the company actually implies that it is not an official sponsor. Or, perhaps VANOC just wants to avoid the bad publicity of a lawsuit against a well-known Canadian company.

The whole situation raises some questions about what the Olympics are really about and whether they are really the boon for local businesses that they are made out to be. The Olympics have been criticized in recent years for being less about sporting excellence and more about being a massive marketing cash-grab. Smaller Canadian companies and certainly local Vancouver businesses have no chance at being official Olympic sponsors, and the IOC seemingly would like to see them completely shut out, with the profits instead flowing to the big-ticket advertisers like Coke, McDonalds, and GE. Though certainly not a mom and pop operation, Lululemon is nevertheless a Vancouver-based clothing company, and it doesn’t seem unreasonable to me that they and other Vancouver retailers should be able to capitalize on the massive “cool sporting event” that will shortly be gripping their city.

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A recent decision by the European Court of Justice has held that Canada’s maple leaf is a protected mark both for goods and services.

American Clothing Associates SA (ACA), a Belgian clothing company, sought to register a trade-mark made up of the Canadian maple leaf symbol with the letters RW located beneath. The application was for use in association with goods and services.

On initial application, the Office for Harmonization in the Internal Market (OHIM) examiner concluded that the mark was not registerable as it “would improperly connote an association with Canada”. On an appeal of the examiner’s decision, ACA lost in part. The Court of First Instance concluded that despite the inclusions of the RW element, the mark was still in violation of Article 6ter of the Paris Convention and was therefore not registrable for wares.

prohibits the user of marks incorporating State indicia without consent. It states:

(1) (a) The countries of the Union agree to refuse or to invalidate the registration, and to prohibit by appropriate measures the use, without authorization by the competent authorities, either as trademarks or as elements of trademarks, of armorial bearings, flags, and other State emblems, of the countries of the Union, official signs and hallmarks indicating control and warranty adopted by them, and any imitation from a heraldic point of view.

(c) … The countries of the Union shall not be required to apply the said provisions when the use or registration referred to in subparagraph (a), above, is not of such a nature as to suggest to the public that a connection exists between the organization concerned and the armorial bearings, flags, emblems, abbreviations, and names, or if such use or registration is probably not of such a nature as to mislead the public as to the existence of a connection between the user and the organization.

The court also pointed to the enabling legislation of the Paris Convention for the council of the which states:

Article 7 (1)(h) trade marks which have not been authorized by the competent authorities and are to be refused pursuant to Article 6ter of the Paris Convention;

However, as Article 6ter refers only to trade marks, and based on Article 1(2) and Article 6(1) of the Paris Convention, there is a distinction between trade marks which are registered for goods and, ‘service marks’. As such, the Court of First Instance concluded that prohibition on registration and use established by [Article 7] does not affect service marks and that ACA's RW mark and maple leaf could be registered for services. Article 1(2) states:

Article 1 (2) The protection of industrial property has as its object patents, utility models, industrial designs, trademarks, service marks, trade names, indications of source or appellations of origin, and the repression of unfair competition.

This was further supported by remarks from the World Intellectual Property Organization (WIPO) on their website under the article entitled :

Article 6ter is only applicable to trademarks and does not oblige States party to the Paris Convention to refuse or to invalidate the registration, and to prohibit use of State emblems or other officias signs as a service mark or as an element of a service mark. States are nevertheless free to do so...

Both the OHIM and ACA appealed to the European Court of Justice (ECJ). In their decision, the ECJ upheld the First Instance Court with respect to their decision on the registrability of ACA's mark for goods, dismissing the appeal brought by ACA.

The ECJ reasoned that the scope of protection of Article 6ter of the Paris Convention is absolute and “… does not depend on whether the emblem imitated in a trade mark is perceived by the public as a distinctive element or an ornamental element …”. The court further held that the essential functions of trademarks and State emblems are different in that State emblems are meant to identify a State and represent its sovereignty whereas trademarks are a means to identify the origination of goods and services. Furthermore the ECJ said that the protection of State emblems does not require a likelihood of confusion. State emblems cannot be declared invalid, their protection period is not limited and they are protected without the need for registration. The court also concludes that Article 6ter of the Paris Convention may even be applicable in cases where the mark is not an exact reproduction of a State emblem�� if a trade mark is perceived by the relevant public as an imitation of a State emblem.

The ECJ, however, disagreed with the First Instance Court that Canada’s Maple Leaf could be registered for services. The ECJ ruled that the Paris Convention does not require States to distinguish between trademarks for goods and services although States are free to do so. The court outlined that based on Article 29(1) of Regulation No 40/94 it is evident that the Community legislature did not intend to discriminate between marks for goods and marks for services.

In their decision, the court refrained from canvassing the policy reasons why official marks should not be registerable for both wares and services. There are very good reasons, however, why wares and services should be treated equal.

Generally, the root policy behind trade mark laws, irrespective if they are Canadian statutes or international treaties, is to protect the public from being misled as to the origins of a ware or service. When it comes to state emblems and flags, however, this is not the case. These official marks are protected to allow for state sovereignity.����The flag of a nation has a special significance to the people of that nation. Flags are raised and lowered with the rise and fall of the sun, they are saluted by the military, and flown at half mast to honour those who have fallen.��The symbolism of a flag extends beyond that of a traditional trade-mark. It would only make sense that protection should extend beyond what is traditionally��afforded to trade-marks.

Despite the fact that registration of the Canadian maple leaf for both goods and services is, at this time, contrary to European courts' interpretation of international laws, ACA's continuing effort to register their RW mark is in many ways a compliment to Canadians. Implicitly, ACA's efforts recognize the Canadian maple leaf as much more than just a trade-mark . The Canadian maple leaf symbolizes a nation of people that are true, north, strong, and free - a message which certainly rings true the world over.

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Underlying the different stories is a concern for consumer protection. As the government of Saskatchewan put it in their discussion paper, there is a concern that there should be “a way to ensure that members of the public have ‘fair’ access to tickets for desirable sporting and entertainment events.” While the provinces of Ontario, Manitoba, and Alberta have specific anti-scalping legislation (Ticket Speculation Act, , The Amusements Act, , and The Amusements Act, respectively) to prevent the reselling of tickets above face value, the VANOC suit filed in British Columbia Supreme Court had no similar legislation to stand on. Instead, VANOC pursues its claims under generic consumer protection legislation, contract law, and intellectual property laws. It is the last of these that raises concern.

��

Trade-mark Overreach

��

While we have not been able to obtain the statement of claim filed by VANOC, it has been that VANOC is making an argument that ticket broker is infringing on VANOC’s official marks. This seems problematic in two ways: (1) it usurps official mark protection for a purpose it was not intended for, and (2) related to (1), it creates an inequitable application of the law by giving VANOC a remedy for ticket-scalping that other event organizers in B.C. don’t have.

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Purpose of Official Mark Protection

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S. 9(1)(n)(iii) of the Trade-Marks Act, separates official marks used by ‘public authorities’ from traditional trade-marks and gives them broader protection. These marks benefit from a simple adoption and publication process (without any opposition hearings), and are not limited in the scope of their protection only to certain wares and services. The rationale behind these marks is that these are not just marks used to identify goods and services, but rather have a greater significance because they emanate from a ‘public authority’ whose identity must be especially safeguarded.

��

To the extent that the Vancouver 2010 Olympics played an especially important public role, parliament went even further and passed the Olympic and Paralympic Marks Act, [OPMA] – an act which explicitly laid out the marks for which the Olympic committee wanted protection. While we don’t know if VANOC made an argument under the OPMA, the wording in s. 3 of the OPMA tracks the words in s. 9 of the Trade-marks Act fairly closely, so it can be presumed that the avenue of argument is open to them.

��

But what is the purpose of these protections? For official marks, it is to ensure the protection of the identity of the public authority. For the OPMA, it is to ensure that the Olympic committee can protect its sponsors from other businesses usurping their sponsorship status. Here, however, the ticket broker is trying to sell legitimate tickets obtained from VANOC. This is not a problem with the ticket broker holding themselves out to be VANOC, nor is it a problem of businesses trying to employ the Olympic marks to obtain an unauthorized benefit. Purchasers of the tickets know that these are second-hand tickets which are likely resold without the knowledge of VANOC. As such, although reselling tickets may not be socially desirable, using official mark legislation to stop such practices contorts the law to achieve an end it was not designed for.

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Inequitable Application of Law

��

Corollary to the first problem is the second problem of the inequity that flows from only allowing Olympic organizers to have a remedy for ticket scalping but not others in similar situations. That is, because official mark protection is so broad, VANOC will likely be able to succeed under such an argument whereas an event organizer with just a regular trade-mark will not. That is because regular trade-marks are limited to preventing confusion in the marketplace. In the resale of a legitimate ticket, the event organizer’s trade-marks are used merely to describe what is being sold. There is no deception, and trade-mark law will likely not help them.

��

For example, if the National Hockey League’s Vancouver Canucks franchise makes it to the Stanley Cup Final this year, game tickets will undoubtedly be in high demand – just as Olympic tickets are. The question then becomes: how fair is it that VANOC has a broader official marks argument available to them in stopping ticket scalping, but the Vancouver Canucks cannot make the same argument on what are almost identical situations?

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Consumer Protection and Ticket Speculation

��

I hope not to leave the impression that I don’t support VANOC’s efforts here. Their public-interest and consumer protection rationale for pursuing this lawsuit seems well-based. This is especially so for an event like the Olympic Games where so much national pride and patriotism is at stake. The public deserves to have a fair shake at attending these events and VANOC is trying to achieve that.

��

My criticisms are leveled at the hijacking of the official mark protection for use in a way that renders it unfair. It warps the purpose for which official marks protection exist, and makes the OPMA seem even more like an unfair piece of special-interest legislation.

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This lawsuit is ultimately about two things: (1) consumer protection from fraudulent ticket vendors and (2) a broader societal disdain for ticket scalpers. Instead of contorting Official marks legislation to achieve its aims, VANOC should address the ticket scalping problem by lobbying the BC legislature for laws prohibiting scalping. This is the more appropriate avenue because it leaves the integrity of official marks legislation intact, and provides a more equitable application of the law for all British Columbian event organizers (not just VANOC).

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The public domain in trademarks is composed of images, words, and phrases that cannot reasonably be granted exclusive protection because they are either generically descriptive, or because they are part of some shared cultural history.�� A stranger to IP would likely assume that marks associated with the Olympics would fall under the latter category, considering that the international event has been around for centuries and is premised on sportsmanship, community, and good will.�� In Canada, though, Olympic marks actually receive an unprecedented amount of legal protection, attaining a level of exclusivity that is beyond that of “official marks” status.�� With the legislation of the (OPMA) in 2007, Olympic-related marks (such as the rings or the Olympic flame) are essentially as far away from the public domain as possible.�� While there are indeed positive benefits provided to official sponsors, the OPMA has negative consequences that run contrary to the inclusive Olympic “spirit” and to the economic incentives behind hosting the Games.

The reason that the Olympics have such tremendous marketing potential (and thus have been made exclusive through the unique legislation that is the OPMA) is because they appeal to individuals’ personal ambitions and, more importantly, to a shared sense of nationalism and pride.�� There seems to be something inherently undignified about monopolizing the profit-making potential of these sentiments.�� On the other hand, the gradual commercialization of sport places as much (if not more) emphasis on business competition as it does on the actual athletic competition, and so it makes perfect sense that the International Olympic Committee (and its Canadian trustees) is stringently protecting this marketing goldmine.

The Olympics have rightfully enjoyed official marks status in Canada since 1983, but evidently this amount of protection was not sufficient to properly defend authorized use of Olympic marks in our overly commoditized society.�� The International Olympic Committee (the ultimate owner of all things “Olympic”) has long recognized the marketing, sponsorship, and investment potential behind the Olympics, and as such they made the OPMA a condition precedent to Vancouver’s hosting of the Games; not surprisingly, similar legislation has already been passed in London.
The rationale behind the advanced protection is credited to the abundance of possible trademark violations that are likely to occur in a very small window of time (between now and 2010), and to curtail ambush marketing.�� The OPMA has therefore given the Vancouver Organizing Committee (VANOC) absolute authority and discretion in prohibiting use of the Olympic marks.�� Most significantly, because of the impending Olympic deadline, VANOC has been awarded a procedural pass, allowing them to issue injunctions without going through the traditional legal channels, offering those accused of violation with no opportunity to seek judicial review nor any mechanism to challenge the validity of the OPMA’s extreme limitations.

Ambush marketing is a practice that commonly occurs with major sporting events, whereby a business intentionally deceives consumers into thinking that they are official sponsors of the event and, in doing so, undermines their competitors who hold official (expensive) sponsorship titles.�� For example, in 2006 Lufthansa led the public to believe it was a sponsor of the Fifa World Cup by painting a soccer ball design on its airplane, even though it had no official connection to the games.�� Certainly, the OPMA’s expeditious injunction process will help to curtail this kind of subversive and unfair competition, but it will also greatly restrain small businesses that have no deceptive intentions and are merely trying to increase revenue by associating with a major current event.

Hosting the Olympics is an important opportunity for Canada to boost its economy through increased consumerism, yet the OPMA reserves profits only for those who can afford to pay for sponsorship titles (many of whom are multinational corporations not based in Canada).�� Meanwhile, Canadian businesses that cannot afford this title are required to restrain the management of their enterprises by ignoring the presence of the Olympics.�� Teresa Scassa (2008, “Faster, Higher, Stronger”) points out that these “super trademarks” not only restrict the ability of businesses to market themselves (which is arguably an infringement on the freedom of commercial expression), but also places restrictions on our natural instinct to identify with and embrace the massive spectacle that is taking place in our own backyard.

Although some level of trademark protection for the Olympics is necessary, the extent to which it has been legislated in Canada is concerning.�� While ambush marketing could certainly be characterized as unsportsmanlike conduct, so too could not letting anyone else play.

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A Trademark is any logo, word, symbol, name, phrase, image or a combination of these elements that makes an individual and company wares and/or services distinctive. On one hand, the producers/providers of wares or services can legally protect their company identity, guarantee a legal title to their Intellectual Property, and ensure that it is them who reap the benefits of the financial and reputation related awards, and not an imitating competitor. Likewise, on the other hand, consumers are empowered with a tool to differentiate between competing products, and to reduce their costs of shopping and making purchasing decisions.

The (the Act) consists of a wide variety of ‘prohibited marks’, such as flag, official sign or hallmark, armorial bearing, abbreviation of name, emblem, arms or crest etc. While the overall purpose of the section is to prevent people from ‘cashing in’ on the prestige and authority of these established marks, there is nevertheless a subsection, s.9(1)(n)(iii) that provides ambiguous protection to “public authorities,” whose potential exploitation goes contrary to the rationale of ��s.9 and the Act. These marks, called official marks, are a unique feature of Canadian Trademarks law.

���������������������� Unlike other provisions under the Act, the family of ‘official marks’ has several advantages: no substantive examination process, less formal registration procedure, no opposition proceeding, potential unlimited duration and a wide coverage of all products and services. ’ delineates the concept of ‘IP Gold Rush’ in association with the regime of Intellectual Property in general, and ‘official marks’ in particular. ��She indicates that the emerging significant commercial value of IP has compelled people to claim IP over such things where no rights are likely to exist. Given the tremendous advantages of the official marks, the trend has been for people to claim rights over public domain territory, transforming aspects of general culture into private party’s revenue stream.

���������������������� Over the last few years, common law has provided some significant developments on the ‘official marks’ frontier. To apply for these special marks, a body needs to be a ‘public authority,’ the qualification for which was uncertain for the longest time. Currently, as highlighted in , two main factors ought to be analyzed: public benefit and governmental control.

���������������������� Owing to the absence of any explicit purpose of this subsection, one can only assume what the ‘official marks’ are required to achieve. If one were to assume that this was a tool to encourage individuals or companies to promote public benefit efforts, the case law rejects this notion. Instead, the public benefit criterion takes a backseat in the ‘public authority’ analysis. Consequently, various charitable organizations, volunteer groups and religious organizations that aim to achieve public welfare, protection of the symbols of their identity (Canadian Jewish Congress v. Chosen People Ministries, Inc.) or maintenance and renovation of entities for educational and historical purposes (Bluenose II) are not guaranteed an ‘official mark’ unless the government control test is met.

���������������������� Over time, the government control factor has evolved to include the following: subject to control within Canada and by a Canadian government (Canada Post Corp. v. United States Postal Service), ongoing government supervision of activities (ON Assn. of Architects v. Assn. of Architectural Technologies of ON), ongoing government influence in the body’s governance and decision-making and participation of government members on the body’s operating committees (Sullivan Entertainment Inc. v. Anne of Green Gables Licensing Authority Inc.). It is also established that mere government funding, statutory incorporation or unilateral and exclusive legislative amendments are not sufficient to pass this requirement. While the list is not exhaustive, the factor is nevertheless determinative. ��

���������������������� With the conclusion that public benefit is not a key element, and the government control test is the all-deciding factor, one is compelled to wonder if there is an ulterior motive, or a mischief, that ‘official marks’ is set out to achieve. Is the actual purpose to promote government intervention while discouraging privatization? Is the dual requirement of public benefit and government control aimed at bringing religious organizations, forming a major part of charitable institutions, within government supervision and influence? ��While these are mere speculations, the uncertainty in the overall benefits gained from ‘official marks’ elevate these speculations to persuasive assertions. Required next then, in order to shape this unique domain of marks, are significant legislative amendments to offer greater transparency.

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