Attention-grabbing sporting events can offer brand owners a valuable opportunity to promote their products and services. But it’s important to be aware of the trademark dos and don'ts of capitalising on event exposure. Jesse Mol provides some guidance.
The biggest sporting events, including the Super Bowl, the Olympic Games and the World Cup, are huge attention-grabbers. Only a select (paying) group of companies are allowed to call themselves "official partners" or "sponsors" of such events.
What can other companies do? The temptation for them to get a front-row seat for a few cents is strong. By launching a themed product or event, or a social media campaign, they can still capitalise on the event's exposure.
But before you jump on the bandwagon, ask yourself this question: Will I score with this strategy, or is there a risk of trademark infringement or a claim due to ambush marketing?
What should you pay attention to as a business owner regarding these events?
Some critical dos and don’ts
SUPER BOWL, OLYMPIC GAMES and WORLD CUP aren't just names for sporting events. They are registered trademarks, supported by extensive licensing programs and active enforcement.
EU trademark protection is primarily governed by the European Union Trademark Regulation (EUTM Regulation). Pursuant to Article 9 of the EUTM Regulation, the trademark owner can oppose the use of:
- An identical sign for identical goods/services;
- An identical or similar sign for identical or similar goods/services, if it is likely to cause confusion among the public;
- An identical or similar sign, regardless of whether it is used for identical, similar, or dissimilar goods/services, and thus takes unfair advantage of or is detrimental to the distinctive character or reputation of a well-known trademark.
The latter ground is often particularly important, as the largest sporting events are usually registered and qualify as well-known trademarks, meaning infringement can occur without any likelihood of confusion.
If, as a retailer, you simply indicate that you are open during the "Olympic Games," this is an informative and proportionate reference and will generally not cause any problems.
However, once the use becomes commercial or promotional, the risk of a claim from the event organiser increases. A fast-food restaurant that promotes an "Official World Cup Burger", for example, and uses the event's official logo for this promotion, runs a significant risk.
As the Court of Justice of the EU (CJEU) confirmed in L’Oréal v Bellure, a sign takes unfair advantage of a well-known trademark when it "follows the coattails of the well-known trademark" to capitalise on the appeal, reputation and prestige of that trademark, thereby profiting, without financial compensation, from the commercial effort made by the trademark owner to create and maintain its image.
Therefore, be cautious with terms that suggest an affiliation. "Official", "Partner" and "Sponsor" should only be used if there is an actual contractual relationship with the event organiser, but even more subtle formulations can be considered misleading. Avoid any suggestion of a commercial connection.
- "But I'm not saying I'm a partner, am I?"
A common misconception is that trademark infringement only occurs when a company explicitly presents itself as an official sponsor.
Even without an explicit claim of sponsorship, trademark infringement can occur, for example, when the use takes unfair advantage of the event's reputation or creates the impression of a commercial connection.
Creating a connection with the event organiser in this way is known as ‘ambush marketing’, a technique by which a company or brand associates itself with an event without paying sponsorship fees. The company or brand then gains attention among the event's target audience and the media.
A well-known example is the orange dress ambush by the Bavaria brewery at the 2010 World Cup in South Africa. During the Netherlands-Denmark match, 36 women entered dressed as Danish supporters, attracting attention when they removed their outer layers of clothing during the match, revealing the orange dresses widely distributed by Bavaria. While the term Bavaria was not visible on the dresses, Bavaria was the sponsor of the stunt and thus profited from the exposure. FIFA did take action, and Bavaria subsequently paid compensation to FIFA.
Omitting its own brand didn't help Bavaria, but using a disclaimer generally doesn't help either. For example, the CJEU confirmed in Arsenal v Reed that affixing football club trademarks to scarves and shirts qualifies as trademark use. Disclaimers don't automatically help because trademark protection also extends to confusion that may arise after purchase (post-sale confusion). In this way, unofficial merchandise can infringe by compromising the essence of the brand.
Event organisers actively monitor and take action if you explicitly or implicitly associate your company or brand with the event. Even using a disclaimer won't protect you from trademark infringement in such a case.
What can you do? Choose generic and descriptive alternatives. Instead of "Super Bowl party”, you could use terms like "Big Game Night". Creative word choice is not only marketing-savvy but also limits legal risk.
Infringement isn't limited to the name of the event. Consider logos and emblems, mascots, typography, corporate identity elements and slogans.
Advertisements that are in any way associated with protected events can be blocked or restricted.
Therefore, keep in mind that you may also face operational risks. Avoid using registered trademarks, not just the name. Just because many trademarks are visible everywhere during an event doesn't mean they're free to use.
Build your own identity: A sporting event can provide a huge boost in popularity for companies that participate, but this is temporary. After the event, building your own (brand) identity should continue. Continue investing in an independent brand identity. This makes better marketing and legal sense.
The final whistle
The commercial appeal of events like the Super Bowl, the Olympic Games and the FIFA World Cup is considerable. With the right precautions, you can capitalise on the sporting energy of a large-scale event. Get inspired, but avoid associations and avoid confusion.
To find out how, or for further practical insights, speak to your Novagraaf attorney or contact us today.
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