London Olympic Brand Under Fire

We recently reported on concerns that the Vancouver Organizing Committee for the 2010 Olympic Games has regarding ambush marketing.  Ambush marketing occurs when persons who are not properly licensed, market their wares and services in a manner which suggests a connection with the Games, often resulting in trade-mark infringement of protected Olympic marks.

Now it appears the that London Organizing Committee for the 2012 Olympic Games may face the opposite problem. The official emblem for the 2012 Olympics, which is a coloured jagged design based on the date 2012, was unveiled on Monday. However, animated footage promoting the brand launch had to be quickly removed from the organizers’ website amid fears it could trigger epileptic fits. The particular footage showed a diver diving into a pool which had a multi-colour ripple effect. The emblem itself, which cost £400,000, is also attracting the wrong kind of attention. Only two days after its launch, nearly 50,000 people had signed an on-line petition to have the logo scrapped, describing it as “ridiculous” and “an embarrassment to London”. The UK Daily Mail newspaper called it “the work of a painting chimp”.

There was controversy when the symbol for the Vancouver Games was first introduced, but that was mild in comparision.

Wine Trademark Trends

We recently reported on the increased appearance of creative trademarks for wine, based on applications to the Canadian Trade-marks Registrar over the last few months. Thanks to the creative talents of wine marketing trendsetters like B.C.’s own Bernie Hadley-Beauregard of Brandever Strategies, this movement appears to be continuing.

Recent applications include some animal references such as SPEEDY TURTLE (Application No. 1,299,250), FOUR EMUS & Design (Application No. 1,280,221), CAT’S TAIL (Application No. 1,305,983) and RED KANGAROO (Application No. 1,277,928).

Many Canadian companies have taken the lead with some less traditional names for wine appearing as recently advertised marks in the Canadian Trade-marks Journal. They include: from Ontario, BARE NAKED (Application No. 1,302,240, but apparently opposed by Bear Naked, Inc.), and from Québec, SEXY LIZARD (Application No. 1,299,249) and LOST BIKINI (Application No. 1,299,255), giving new meaning to the phrase “in vino veritas“. Other applications showing a little more restraint include LITTLE BLACK DRESS (Application No. 1,282,547) and QUEEN OF HEARTS & Design (Application No. 1,300,388).

Despite the move to more creative wine brands, the more prevalent trend seems to be in favour of old world references. Many recent applications for trade-marks for wines in Canada refer to the foreign language names of origin, invoking images of warm Mediterranean climates and rambling vineyards and include: from France, TERRA DI CORSICA (Application No. 1,295,086), from Italy, BELLA TAVOLA (Application No. 1,293,966) and TORRAE DEL SALE (Application No. 1,303,138), from Spain, GRAN SANGRE DE TORO (Application No. 1,287,621), GRAN VIÑA SOL (Application No. 1,287,627) and MAS LA PLANA (Application No. 1,287,622), from Portugal QUINTA NOVA DE NOSSA SENHORA DO CARMO (Application No. 1,287,990), from Quebec, AMBROZZI DI CHANTIO (Application No. 1,264,858), from Argentina VALLE PERDIDO & Design (Application No. 1,295,840). ¡Salud!

Rebranding Costs Lead To Short Circuit

U.S. based Circuit City has put its Canadian chain of stores up for sale, citing, among other reasons, the tens of millions of dollars it was forced to spend in re-branding. Circuit City acquired the chain of stores formerly known as Radio Shack in Canada three years ago. Following completion of that transaction, they were forced to change the name of the stores to The Source by Circuit City. As well as the large re-branding costs incurred, other reasons cited for the sale include increased competitiveness and shrinking margins in the consumer electronics business, difficulties in changing the focus of the types of merchandise offered and Circuit City’s own difficulties in the U.S. market.

Trying to Make Sense of Olympic Trademarks

The front page of the Vancouver Sun today (Thursday, March 29, 2007) features an interesting article on the official marks registered by the Vancouver Organizing Committee for the 2010 Olympic Games (“VANOC”) and the Canadian Olympic Committee. The article notes that VANOC has rights to FRIEND as an official mark and could potentially bring legal proceedings if someone attempts to use it in connection with a business.  

According to VANOC, they have no intention of preventing the use of words like “friend” on their own. They are, however, concerned about ambush marketing in the lead up to the 2010 Olympic Games and intend to prevent persons who are not properly licensed from marketing wares and services that suggest a connection with the Games.

It may be up to the courts to determine whether ordinary words like “friend” can be official marks. The Vancouver Sun article references an Alberta case (Canadian Olympic Association v. Hipson) that arose in the lead up to the 1988 Calgary Winter Olympics in which the court questioned the Association’s right to claim “winter” and “1988” as official marks.

What the Vancouver Sun article does not discuss is the proposed legislation now before Parliament which we discussed in an earlier blog and which, if enacted, will extend the power of VANOC even further.

Olympic Trademark Legislation

The Canadian government has now come forward with new legislation to prevent unauthorized persons from marketing their wares and services in association the 2010 Olympic and Paralympic Winter Games. As noted in an earlier blog, similar legislation has been introduced prior to other Games, including legislation introduced by Italy prior to the 2006 Turin Winter Games.

The Olympic and Paralympic Marks Act (Bill C-47) received a first reading in the House of Commons on Friday, March 2, 2007. Most importantly, section 3 of the Act prohibits any person from adopting or using in connection with a business, as a trademark or otherwise, an Olympic or Paralympic mark or a mark that resembles an Olympic or Parlympic mark. Note the reference to “in connection with a business”. Schedules 1 and 2 of the Act set out lists of the Olympic and Paralympic trademarks.

There are exceptions to this prohibition, including, of course, use by the Canadian Olympic Committee and Canadian Paralympic Committee and persons acting with their consent, but also excused are owners or licensees of marks that were being used prior to March 2, 2007.

Section 3(5) of the Act specifically allows for use of the Olympic trademarks in news reports and “for purposes of criticism”.

Section 4 of the Act prohibits anyone from promoting or otherwise directing public attention to a business in such manner as to lead the public into believing that there is a connection with the COC or CPC. A court must take into consideration the use of a combination of the expressions set out in Part 1 of Schedule 3 of the Act (Games, 2010, Twenty-ten, 21st, Twenty-first, XXIst, 10th, Tenth, Xth, Medals) or a combination of an expression in Part 1 of Schedule 3 with any of the expressions in Part 2 of Schedule 3 (Winter, Gold, Silver, Bronze, Sponsor, Vancouver, Whistler).

Potential remedies include injunctions (in respect of which irreparable harm need not be proved), damages, punitive damages, publication of corrective advertisements and destruction of wares.

The Act includes a “sunset clause” such that Schedule 2 is repealed on December 31, 2010. In the interim, and assuming the legislation is passed, it will be interesting to monitor just how effective the legislation proves to be.

Creating an Effective Brand

Vitamin.com posted an interesting article by Mike McDerment of freshbooks.com on how to create an effective brand.

One thing the article didn’t deal with, however, was the role of trademark due diligence in the brand creation process. Before committing to any new brand, appropriate clearance searches should be conducted. The best new brand in the world may not be of much use if it’s infringing on the rights of a competitor – at the very least, the cost of launching the brand could go up significantly – Apple’s launch of its iPhone brand is a classic example. Apple is fortunate enough to have the legal budget to fight those battles. Many businesses don’t.