Full-backing?

Duncan J. Morgan | September 2015

This autumn England is hosting the Rugby World Cup.  Organised by World Rugby (the governing body of Rugby Union), the Rugby World Cup is one of the most prestigious and popular events in the sporting calendar.  As one would expect, the event has a number of high profile sponsors, including Toshiba, Canon and Coca-Cola, which brings to the fore a number of potential IP issues relating to marketing around sporting events.

Sponsoring certain sporting events commands quite a premium, with brand owners often paying tens, if not hundreds of millions of Dollars to be associated with particular international tournaments.  Sponsors are often keen to ensure not only that their investment provides significant exposure for their brands, but also that these events cannot be used by non-sponsors to promote rival goods and services.  If you are paying such sums to remind us to drink COCA-COLA, it is understandably galling to see the global public watching these events being reminded that alternative soft drinks are available. Therefore, it is not uncommon for sponsors to be granted the exclusive right to sell their category of product in the sporting venues themselves, and for their competitors’ adverts not to be displayed at these events.

However, whilst generally the organisers of events can control what goods get sold and what billboards and badges are displayed in their venues, they cannot so easily control the manner in which the event is reported, the area surrounding the stadium, or indeed the public who come to these events, giving rise to a risk of what is known as “ambush marketing”.  

Ambush marketing is the term used to refer to circumstances where businesses try to associate themselves with events without paying a sponsorship fee.  For example, a German brewery was considered to be ambush marketing by providing orange clothing to members of the crowds at the 2006 and 2010 FIFA World Cups.  This garnered considerable publicity in the international press, and was considered by the event’s organisers to infringe on the exclusive beer sponsorship rights of Anheuser-Busch.

Such is the value of sponsorship in major sporting events, national governments in host countries often pass far-reaching legislation expressly to address ambush marketing before tournaments begin. For example, within 18 months of being awarded the rights to host the 2012 Games, the British government passed the London Olympic Games and Paralympic Games Act 2006, which created the “London Olympics Association Right”.  This right went beyond the scope of existing trade mark legislation by making it unlawful for non-sponsors or those without permission to make “any representation” likely to suggest that there was an association between the London Olympics and their goods and services.

Similarly, for their 2011 World Cup, World Rugby (or the International Rugby Board as it was then known) and the various sponsors were protected by New Zealand’s Major Events Management Act 2007.  This prevented unauthorised commercial exploitation of the event (and indeed others), at the expense of either the sponsors or the organisers by prohibiting the use of representations which suggest that goods, services, businesses, individuals or their brand have an association with the event.  As with the British laws relating to the Olympics, this act also set up not only civil offences which could lead to private litigation, but also a number of criminal offences relating to trading around the event.

No IP-specific legislation has been passed by the British government in preparation for this year’s World Cup.  The event’s organisers and their sponsors will need to rely on a combination of regular trade mark law and their own abilities to control events within the venues themselves to protect their rights.  

Rugby World Cup Limited (a company controlled by World Rugby) owns a considerable number of trade mark registrations having effect in the UK and protecting a broad range of goods and services.  These marks include RUGBY WORLD CUP, RWC, ENGLAND 2015 and the name and appearance of The Webb Ellis Cup (the trophy awarded to the tournament winner).  Various sponsors of course also own their own trade mark registrations.

Amongst other grounds, it is an infringement of a registered trade mark to use marks identical or similar to it in relation to identical or similar goods and services in such manner as to create a likelihood of confusion on the part of the public. It is also an infringement to use a mark identical or similar to someone else’s trade mark which has a reputation in such a manner that takes unfair advantage of that reputation, or causes detriment to it. Therefore, businesses which are not sponsors of the World Cup should think very carefully before attempting to market their own goods and services with reference to it. In particular, use of RUGBY WORLD CUP, RWC, ENGLAND 2015 or the names, images or logos of the tournament, teams, trophy or players within it may present considerable legal risks.