Olympic Mark Protection Overkill: One Step Removed From Official Mark Protection and Two Steps Removed From Standard Trademark Protection

In response to a request from the Vancouver Organizing Committee (VANOC) for additional trademark legislation related specifically to the Olympic and Paralympic 2010 Winter Games, the Canadian government proposed Bill C-47, The Olympic and Paralympic Marks Act, which received Royal Assent on June 22, 2007 and is now awaiting its coming into force by the Governor in Council. The legislation’s objective is to target and protect against both the unauthorized use of Olympic trademarks and the consequent destruction of ambush marketers who endeavor to associate their business with Olympic trademarks, without actually becoming official sponsors. While the aim of the legislation to thwart the reduction of sponsorship opportunities may appear to be noble and sound at first, upon closer examination, it is clear that the need for this extra layer of protection is unwarranted in the face of already existing broad protection and definitely not in the public interest.

VANOC currently catalogues 36 pages worth of their already existing official marks and they have subsequently continued to vigorously add additional ones to the list. So while VANOC continues to gain a marketing advantage by stockpiling official marks, a great disservice is done onto the public who are unable to use the documented list of already owned marks in association with their business ventures. With such an ever-expanding extensive portfolio, it becomes quite challenging for the average ma and pa shop, for example, to keep abreast of this relevant information and to steer clear of possible infringement suits. This monopolistic dilemma is further exasperated as a result of VANOC’s ability to utilize the official mark segment of the Trademark Act. The scope of protection afforded to official marks is much broader and extraordinary when compared with standard trademarks. Unlike ordinary trademarks that cover only a protected phrase or symbol in a specific market, for example, official marks are granted exclusivity. An official mark may also be registered even if it is confusing with another mark that is already on the registry – a protection not afforded to ordinary trademarks. Furthermore, official marks are not examined for registrability, which means that the registrar has no discretion in giving out official marks to public authorities. Thus, all the criteria that applies to standard trademarks, such as the inability to gain protection for generic or descriptive marks, does not apply to official marks. This is the reason why VANOC is permitted to monopolize on marks, such as `FRIEND’, `GOLD’, `MEDAL’, and `WINTER’, which would normally be regarded as words properly situated within the public domain. Why should non-sponsors be cautious about using such common terms in association with their businesses, in order to safeguard against the possibility of getting sued? Such a scheme, in my opinion, creates a chill amongst small business owners and essentially stifles freedom of expression. I might be able to fully appreciate, on the other hand, why specific official marks related to the Olympics might be granted such expansive protection if the initial intent of official mark legislation were respected. The original Olympic word and design mark, for example, is regarded as a public symbol that, in my opinion, must be prevented from becoming a pawn of trade or proprietorship if official mark protection is to be granted. I believe that the initial objective of official mark legislation was to preclude any person from capitalizing on any well known, respected public symbol and adopting it for their own wares or services. The difficulty with the current legislation, however, is twofold. First, nearly any indicia could qualify as an official mark, so long as the entity meets the trivial public authority definition. Second, a provision exists within the trademark legislation that permits, with the consent of the public authority, an official mark to be used in a commercial context and thus to be commercially exploited. VANOC, for example, licenses its various marks to Olympic sponsors, who in turn use the mark for commercial purposes. In this manner, the objective of official mark legislation is defeated, consequently granting public authorities stronger rights and protection for what appears to be an ordinary trademark.

After acknowledging the already powerful provisions embedded within the Trademark Act, it seems unjustified that VANOC and each of the official sponsors be granted further unprecedented legal powers to guard its trademarks. In my opinion, the legislation goes far beyond what is required to ensure that maximization of sponsorship opportunities continue and unauthorized businesses do not profit off the Olympic initiative. s.3 of the new legislation prohibits any person from adopting or using in connection with a business, as a trademark or otherwise, an Olympic mark, a Paralympic mark or a mark that resembles an Olympic or Parylmpic mark. This provision clearly stipulates that the person need not be using the official mark as a trademark to be infringing upon the official owner’s right – they simply need to be using the mark in any capacity in relation to their business. Thus, a food item listed on a restaurant’s menu entitled `2010 Olympia Pizza’, might very well be infringing upon one or more of the myriad of marks owned by VANOC if a court comes to the conclusion that a consumer might mistakenly believe the restaurant to be associated with the Olympic backers. The new legislation also eliminates the need for a public authority such as VANOC to prove any sort of damages or injury before being able to prevent someone from utilizing their claimed marks for the Olympic Games. Thus, even if VANOC is not harmed from the usage of one of their marks by a non-sponsor, they are still entitled to be remedied. What seems to follow is that whether or not the official sponsors take offence to the utilization of the mark has no bearing on the results of the infringement suit. Consequently, satisfaction of the overriding objective of the new legislation has been effectively overshot and the public interest seemingly disregarded.

One Comment
  1. If the author’s belief that the objective of official mark legislation is to “preclude any person from capitalizing on … respected public symbol[s] and adopting [them] for their own wares or services”, then the author has unwittingly justified the need for the Olympic and Paralympic Marks Act (“OPMA”). The OPMA was enacted to prevent ambush marketing, not commercial exploitation of a public symbol.

    The Olympic Games are a spectacle; there is nothing quite like them. The fleeting moments of defeat, patriotism, camaraderie and victory belie the arduous preparations for, and expense of, the Games. As Professor Vaver notes in his text at p. 210, the tremendous costs are being shouldered increasingly by the private sector.

    VANOC’s only asset with which it can attract private sector sponsorship is the Olympic brand; in exchange for sponsorship, a business is permitted to associate itself with the brand. Ambush marketing devalues the brand and reduces the incentive for the private sector to sponsor the Games. If a business is able to exploit the Olympic brand without sponsoring the Games, why would a business sponsor the games?

    OPMA provides legal rights targeted at the unique spectacle of the Olympics—it is sui generis legislation, for a sui generis event. The speed with which an injunction can be obtained and the expiry of protection of the 2010 Vancouver Olympic marks on December 31, 2010 are well-suited to keep value of the Olympic brand intact during the period leading up to the Olympics, during the 3 week frenzy of the Olympics, and shortly thereafter.

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