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AMERICAS: CANADA

Bill C-47:  Tackling ambush marketing in Canada in the Olympic context
Author: Geneviève Marcotte and Cindy Bélanger, Heenan Blaikie LLP

In view of the upcoming Vancouver 2010 Olympic Games, Canada is showing its commitment to protecting private sector sponsoring from the threat of ambush marketing by adopting Bill C-47 entitled The Olympic and Paralympic Marks Act (the “Act”).[1]

With ambush marketing not previously regulated in Canada and the only remedies available being those provided under the general regime of trade-marks, copyright infringement and passing-off, the Canadian legislator wanted to send out a strong signal to potential ambush marketers looking to ride the Olympic wave and to by-pass the Vancouver Olympic Committee (“VANOC”) sponsorship and licensing programs.

While the Act was enacted in view of the 2010 Games, it is tailored to apply to any Olympic or Paralympic Games that Canada may host in the future. The Act prohibits the adoption or use in connection with a business, as a trade-mark or otherwise, in any language, of an Olympic mark or a mark that so nearly resembles an Olympic mark as to be likely to be mistaken for it.  The Act sets out a broad range of expressions that are prohibited marks, such as “Olympic Games”, “Olympian” and “Faster, Higher, Stronger”;  yet, it also provides that other expressions such as “Canada 2010”, Whistler 2010” and “Sea to Sky Games” will benefit from this extraordinary protection but only for a limited period, being until December 31, 2010.

The legislator has set out limitations to the general prohibitions.  For example, an Olympic mark in use before March 2, 2007 will be exempt where used in association with the same wares and services contemplated by the prior use or registration [2].  Addresses, geographic place names, protected geographical indication and personal names will also be excluded from the general prohibitions.  Moreover, public authorities will be entitled to use Olympic trade-marks on badges, crests, emblems or other marks, subject to appropriate public notice having been given prior to March 2, 2007.

The legislator has also introduced exceptions to the prohibition in the context of news reports, criticism and parody which are not considered to constitute use in connection with a business.[3]

The legislator has included a saving provision for advertisements in proximity to published material containing an Olympic mark or its translation in any language.[4]

In terms of remedies, the Act provides that the Canadian Olympic Committee (“COC”), an Organizing Committee or, an authorized user, with the permission of an Organizing Committee may apply to Court seeking relief against anyone acting in violation of the Act.  Proof of irreparable harm will not be required to seek an interim or interlocutory injunction. Relief sought may include an award for damages or lost profits, punitive damages and the publication of a corrective advertisement.  Courts may also order the destruction or exportation of any offending wares, packages, labels and advertisement material, or the detention and disposition of imported wares.

In the wake of this new legislation, VANOC has announced that it would watch out for the following potential ambush marketing acts:

• Olympic-related contests, including offering trips to Olympic Games and Olympic Games tickets as prizes in contests or promotions;
• “Good-luck” or congratulatory advertisements or awards to Olympic athletes;
• References to the Olympic Movement, Olympic Games or Olympic athletes in advertising or marketing;
• Olympic-related giveaways, such as posters and stickers;
• Olympic-related publications, including programs, guides, magazines, maps, supplements, books, diaries and calendars;
• Olympic-related hospitality services.[5]

It will be interesting to observe how effective the new legislation will be in helping reduce or avoid ambush marketing altogether.  There are limits to the scope of protection afforded by this new legislation which does remain one focused on the use of Olympic marks.  While the new bill of legislation may not serve to eliminate the more subtler forms of ambush marketing which have been allowed to develop on the international scene in the last few years, be it in the context of the Torino Winter Olympic Games or more recently in the FIFA World Cup of Soccer, it does somewhat limit opportunities for ambush marketers and as such, is definitely a step in the right direction in the eyes of sponsors and licensees.

1 While this new legislation received the royal assent on June 22, 2007, it will only come into force at a future date to be fixed by the Governor in council, save for section 13 of Bill C-47 which will only come into force on December 31, 2010.

2 See Section 3(4) of the Act.

3 Section 3(5) of the Act provides that “the use of an Olympic mark or a Paralympic mark or a translation of it in any language in the publication of a news report relating to Olympic Games or Paralympic Games, including by means of electronic media, or for the purposes of criticism or parody relating to Olympic Games or Paralympic Games, is not a use in connection with a business.”

4 See Section 4(3) of the Act.  Moreover, according to the example set out in the legislative summary, a television crew filming footage that includes Olympic marks would be “saved” by virtue of this provision. See Legislative Summary of Bill C-47, LEGISinfo, 39th Parliament -1st session (April 3, 2006), p. 4.