Planning an Olympic edition of your product or even a special patriotic 2012 line? Want some of that feel-good factor around the London Games 2012 and the Diamond Jubilee? If so, take great care, in particular with any association with the Olympics, as there are special measures in place to prevent ambush marketing or even inadvertent unauthorised association with the Games, in order to protect sponsor interests.
In contrast to the Olympics, the Queen has no specific protection in place to control the use of her image or to prevent piggy-backing on the goodwill surrounding the Diamond Jubilee celebrations this summer, other than an expectation of “good form”. There are regulations governing misleading advertising, backed up by newly issued elements of the CAP advertising code and perhaps the Trade Descriptions Act 1968 which could bite were Her Majesty to prove willing to enforce her rights under that legislation.
The London Olympics and Paralympics
The Olympics are possibly the best protected event anywhere in the world. Whilst the usual gamut of intellectual property rights have been registered or asserted by the International Olympic Committee (“IOC”) and the London Organising Committee of the Olympic Games (“LOCOG”) – including trade marks, copyright and design rights – specific intellectual property rights have also been created to provide even greater protection for the Olympic and Paralympic movements and the London Olympics and Paralympics Games themselves. These rights are generously biased in favour of the proprietors (one of whom is currently LOCOG). They provide grounds for complaint and action by LOCOG where any association is created by a non-sponsor between itself, its goods or services and the Games. The aim is to protect the interests of the official sponsors of the Olympics and Paralympics who have paid millions to be associated with the goodwill generated by the Games and whose support is a pre-requisite for the continued viability of the “most expensive show on Earth”.
Restrictions on associations with the Olympics and Paralympics and the London Games
Use of the word Olympic(s), Olympiad(s), Olympian(s), equivalent Paralympic terms, the Olympic motto (Faster, Higher, Stronger) or the Paralympic motto (Spirit in Motion) in any language, or the use of the Olympic symbol (the five ring design) or Paralympic symbol (such words, mottos and symbols collectively “controlled representations”), will infringe the Olympics association right (“OAR”) or Paralympics association rights (“PAR”) respectively, unless used in a context which is unlikely to create an association with the Olympics or Paralympics in the minds of the public (this is pursuant to the London Olympic Games and Paralympic Games Act 2006 and the Olympic Symbol Protection Act 1995). There are a few exceptions to this rule where use of such words/mottos/ symbols is deemed non-infringing, mostly based on genuine journalistic use, but these are unlikely to apply in most advertising or marketing contexts.
The concept of an infringing “association” is the same pursuant to the OAR, PAR and the LOAR. It is a concept of association between a person, goods or a service and the Olympics/Paralympics or London Olympics (as relevant) which “includes, in particular” any kind of contractual relationship, any kind of commercial relationship, any kind of corporate or structural connection and the provision by a person of financial or other support for or in connection with the Olympics/Paralympics/London Olympics. It appears to be a very broad and unlimited definition which has yet to be tested in the courts.
Although it may seem easy to avoid the use of the these specific Olympic and Paralympic words, mottos and symbols, the London Olympics association right (“LOAR”) provides additional protection of sponsor interests by providing a ground of infringement where there is the creation of an association with the London Olympics in any way – verbal, aural, visual – including contextual references. For example, LOCOG cites the use of the Olympic colours, the use of the Olympic torch or even the use of words with Olympic qualities, as elements which could suggest an association (and hence infringement of the LOAR). Certain combinations of words could also result in infringement if a court finds that their use created an association: these include any combination of “Games” and “2012” (in words or numerals) or either of these terms along with any of “gold, silver, bronze, London, medal, sponsor or summer”. Thus “London 2012” or even “summer 2012” would be an indicative usage, (although the terms do not even need to be juxtaposed for them to be classed as “listed expressions” and taken into account in the court’s overall assessment). The court may take such usage into account when assessing whether an association has been created.
Whilst protections afforded to Olympic and Paralympic references by the OAR and PAR are permanent and indeed exist in other states which are members of the International Olympic movement, the potentially wider reaching LOAR is limited in term, expiring at the end of 2012.
Nevertheless, the LOAR could easily be infringed inadvertently. A combination of images of iconic London buildings along with a sporting reference could suffice. The depiction of Olympic venues (which include Hampton Court as well as those with a more obvious Olympic connection, such as the Olympic Park architecture) could also trigger infringement. LOCOG suggests that combinations of Olympic sports in an advertisement could also infringe, even without the mention of the word “Olympics”. LOCOG says, in making an assessment as to whether to bring an action for infringement, it will consider past advertising practice – for example, checking whether there was a change in the advertiser’s normal approach which coincided with the Olympics.
Infringement of the OAR, PAR and LOAR can result in civil penalties. These include injunctions, damages or account of profits and orders for the delivery-up of infringing goods. Criminal penalties are also possible in relation to the OAR/PAR if the infringement relates to goods (as opposed to services). Fines of up to £20,000 are possible on summary conviction, whilst unlimited fines are possible on indictment.
As with most other intellectual property rights, there is provision for action to be taken for groundless threats of infringement of the OAR, PAR and LOAR, although whether this will inhibit indiscriminate threats of action from LOCOG remains to be seen.
Whilst there are defences to both LOAR, OAR and PAR infringement, including “honestly made statements”, these are unlikely to apply to the promotional use of statements that create an unjustified association with the Games. Advertisers are restricted to either the most oblique references to the Games or to no change in their approach for 2012 at all. Given that a brand of clothes manufacturer was criticised by the Olympics organising committee for the Vancouver Winter Olympics for branding its line of yoga gear with the line “cool sporting event taking place in British Columbia between 2009 and 2011”, and that Vancouver had similar restrictions to London on the words or phrases that could be used, it seems that even tongue-in-cheek attempts to get round the restrictions may be risky. However, with the attendant publicity, this may be a risk that some brands are willing to take.
Olympic/Paralympic “event zone” restrictions
An advert that featured no Olympic words or associations, which was therefore not infringing the association rights, could still create an association with the Olympics if it was placed in physical proximity to an Olympic event. Thus there are severe restrictions on advertising and trading within the Olympic “event zones” – areas in the immediate vicinity of Olympic venues and events (see the London Olympic Games and Paralympic Games (Advertising and Street Trading) Regulations 2011 (“the Regulations”). These are delineated on maps available on the London 2012 website, via the Department for Culture Media and Sport or the Olympic Delivery Authority and at relevant local authority offices. For example, there are restrictions on advertising and trading along the marathon route through London, around the O2 (renamed The North Greenwich Arena for the duration of the Games) and across the parts of the Thames adjacent to the Arena as well as parts of the opposite bank. Tube and rail stations with any part within an event zone are included in their entirety (even if certain parts are underground or would be outside the zone if raised to ground level). Airspace above each zone is protected as is land and water within two metres of the edge of the zones. However advertising on buses and taxis which move in and out of these zones is not restricted.
Restricted “advertising activity” is very broadly defined in the Regulations and includes laser displays, the carrying of adverts or even their display on an animal. The wearing of branded clothing as part of an ambush marketing campaign is also prohibited. The trading restrictions prevent the distribution of souvenir “give-aways” to spectators on their way to the Olympics events, so avoiding the sort of problems faced by the Olympics in the past where branded flags or caps were freely given to sufficient numbers of the attendees at events such that the impression was given of sponsorship by that brand, when none was in place.
There are exceptions to the advertising restrictions and these are primarily based on advertising that would not normally require planning consent under the Town and Country Planning (Control of Advertisements) (England) Regulations 2007. The trading exceptions allow “normal” trading for businesses already located within the zones. Anything that suggests advertising or trading inspired by the Games or attempting to take advantage of the events of the Games, will be suspect. The police and the ODA have rights of entry onto private land, rights of removal in relation to advertising material and the right to close down unsanctioned trading. There is also provision for the recovery of costs from those responsible for the advertising/trading or from those responsible for the premises upon which such activities are occurring. In addition, criminal penalties for offences under the Regulations include an unlimited fine (on indictment) or £20,000 on summary conviction. Individuals, including directors and managers of enterprises engaging in offending advertising or trading, and those responsible for the premises in which the offending advertising is displayed, can be liable.
Given the severity of these restrictions, they are only allowed to apply for the duration of the event concerned and the day before it commences. This means that some areas, such as the Olympic Park, have restrictions for the duration of the Games, whereas those for other event zones last only a couple of days.
Restrictions on the use of Olympic and Paralympic athletes
Although non-Olympic partners are free to sponsor individual Olympic athletes, the use of athletes by non-sponsors or indeed even Olympic partners is restricted by the IOC Charter and no advertising use of a competitor, coach, trainer or official participating in the Olympic Games is allowed during the period of the Olympic Games without specific permission of the IOC board. Athletes can risk disqualification if they do allow their image to be used during the period.
In advance of the Games or afterwards, athletes can be used in advertising but should not create a specific association with the Olympics or Paralympics. Therefore, sponsors of individuals cannot use their sponsorship to create a direct association with the Games themselves, rather, the emphasis should be on the sponsored individual or the sponsored team.
Restrictions on the use of footage of the Olympics/Paralympics and internet guidelines
The IOC Charter claims copyright in all recordings of the Olympics and Paralympics. The IOC also purports to limit what may be deemed “fair dealing” in relation to news reporting and/or analysis. “Fair dealing” is a short-hand reference for exceptions to infringement of copyright set out in the Copyright Designs and Patents Act 1988, which allow the use of copyright material for the purposes of reporting on current events or for criticism or review. The IOC has issued the London 2012 New Access Rules which set out what footage usage will be permissible in relation to the Olympics and Paralympics. These Rules include limits on the number of programs a day that can feature extracts from the Olympics and Paralympics as well as the length these extracts can be and the number of times they can be repeated. Whilst not directly relevant to advertising, it is clear that any unauthorised footage used in a promotional context could infringe the IOC’s copyright.
The IOC encourages the use of social media for non-commercial or promotional purposes as long as this does not create an association between an unauthorised third party and the Olympics. The IOC’s guidelines state that blogs or postings by individuals must be in a diary format and should not suggest commercial connections.
Specific guidelines (the “IOC Social Media, Blogging and Internet Guidelines for participants and other accredited persons at the London 2012 Olympic Games”) have been issued and these should be consulted for further details.
The Queen’s Diamond Jubilee
Of course, this year also marked the Diamond Jubilee of Queen Elizabeth II. Whilst specific and detailed legislation has been introduced to protect the Olympics (as described above), no specific legislation protected the Queen in relation to the Diamond Jubilee. However, various bodies issued guidance relating to the event to help advertisers avoid breaching advertising rules. The most recent guidance was issued by The Committee of Advertising Practice (the “CAP”).
The CAP Code
In line with the rules prohibiting broadcast and non-broadcast advertising that is misleading, marketing communications (which include advertising, sales promotion and direct marketing) should not claim or imply that a particular product is endorsed by the Royal Family, or is affiliated with Royal events, when it is not. The UK Code of Non‑broadcast Advertising, Sales Promotion and Direct Marketing (the “CAP Code”) urges marketers to obtain written permission before implying any personal approval of an advertised product. Any member of the Royal Family who does not want to be associated with a product in this way could have a legal claim against the advertiser either for passing off, or under section 99 of the Trade Marks Act 1994 (see further details below).
The CAP Code also contains specific rules relating to members of the Royal Family, who should not normally be shown or mentioned in a marketing communication without their prior permission. The Advertising Standards Authority (the “ASA”) has in the past upheld complaints about advertising that implied Royal endorsement. However, the CAP Code explicitly states that incidental references that are unconnected with an advertised product, for instance a reference to a book or film about the Royal Family, may be acceptable.
Furthermore, the Royal Arms or Emblems must not be used without prior permission from the Lord Chamberlain’s Office (the “LCO”). References to a Royal Warrant (a mark of recognition that is granted to individuals or companies who have supplied goods or services for at least five years to The Queen, The Duke of Edinburgh or The Prince of Wales) should be checked with the Royal Warrant Holders’ Association (the “RWHA”), as their use is strictly protected under the Lord Chamberlain’s rules on the use of Royal Warrants. Royal Warrants are granted to named individuals within each warranted business and cannot be transferred to another individual, nor if the business is sold or becomes insolvent, without Royal consent. The RWHA has pre-authorised a selection of images of crowns which may be used for business purposes without infringement of the Royal Crown.
CAP’s guidance also directs advertisers to specific guidelines which have been issued by the LCO regarding the sale of souvenir products, advertisements for which are not, of themselves, likely to imply a Royal endorsement. Advertisers should take care to ensure that an advert does not imply that a souvenir product is official memorabilia, and CAP advises against using images that have been provided on souvenirs, or for other specific uses, in marketing communications for unrelated products.
In relation to memorabilia more generally, although Royal photographs and insignia may not usually be used in connection with any trade or business without permission from the relevant member of the Royal Family, these restrictions have been temporarily relaxed for use on souvenirs commemorating the Diamond Jubilee. The LCO’s guidelines state that it will not generally seek to oppose the use of Royal insignia or images of members of the Royal Family on certain articles for sale, provided that they incorporate specific wording, such as “The Queen’s Diamond Jubilee 2012”, or “The Queen’s Diamond Jubilee 1952‑2012”, so long as they are of a permanent kind, in good taste, free from any form of advertisement, carry no implication of Royal custom or approval, and do not contravene any trade mark or copyright. The guidelines also state that souvenirs of the Diamond Jubilee may not be manufactured after 1 October 2012. The LCO is willing to provide guidance to individual advertisers when it is unclear whether use of any Royal insignia may give the impression of Royal endorsement.
The LCO’s guidelines are not legally enforceable, but instead indicate what is deemed to be appropriate.
Examples of advertising that are likely to be permitted
CAP has given the following examples of advertising which it expects are likely to be acceptable in relation to the Queen’s Diamond Jubilee: “Having a party? Don’t forget...”; or “60 ways to celebrate with...”. Such acceptability is on the proviso that any such advert does not feature Her Majesty or other members of the Royal Family. On the other hand, statements such as “The Queen invites you...”, or similar, should be avoided.
Questions and advertising copy can be submitted to CAP’s Copy Advice team for free, bespoke advice on what is/is not likely to be permitted.
Other issues – intellectual property law and misleading commercial practices
Retailers also need to consider more generally the intellectual property law issues that may arise from commercial exploitation of the Diamond Jubilee (in particular, restrictions on use of trade marks and the offence of passing off) and also the potential for related advertising to be caught by regulations which prohibit misleading commercial practices.
It is prohibited to register (without the consent of the relevant member of the Royal Family) a trade mark which consists of or contains any of the following:
- the Royal arms;
- a representation of the Royal crown or any of the Royal flags;
- a representation of Her Majesty the Queen or any member of the Royal Family (including imitations); or
- words, letters or devices likely to suggest that the applicant has had Royal patronage or authorisation.
In addition, a trade mark application which includes a royal reference may be rejected if it is made in bad faith or lacks distinctiveness
Guidance issued by the Intellectual Property Office also provides examples of categories of goods and services for which the word “Royal” (or similar words, such as “Royale”) would imply Royal patronage, and thus require Royal consent (Intellectual Property Office (IPO) Work Manual of Trade Marks Practice). These include high value products such as high quality porcelain and luxury foods, and prestige and public interest services such as exhibitions and charitable services. On the other hand, use of the word “royal” in trade marks for everyday items or goods which are sufficiently removed from association with the Royal Family, such as double glazing or skateboards, will not usually require consent. Equally, word marks incorporating “royal” will be acceptable if they are used in combination with other registrable words which do not imply Royal patronage (for example, “Rayburn Royal”).
It is also an offence for a person to use, without consent, Royal insignia or titles in connection with any business so as to lead to the belief that that person is duly authorised to do so, or is employed by, or supplies goods or services to, the Royal Family.
The Royal Family could employ the tort of passing off to prevent any false representations that they have endorsed particular goods or services. However, members of the Royal Family are afforded more explicit legal protection, and it is a criminal offence to give, in the course of any business, any false indication that goods or services are of a kind supplied to or approved by any member of the Royal Family. This would include the use of Royal names, emblems or arms, or anything deceptively similar. This is a strict liability offence and carries a maximum penalty of two years’ imprisonment and an unlimited fine.
BPRs and CPRs
The Business Protection from Misleading Marketing Regulations 2008 (SI 2008/1276) (the “BPRs”) and the Consumer Protection from Unfair Trading Regulations 2008 (SI 2008/1277) (the “CPRs”) include, amongst other things, general prohibitions on misleading advertising and misleading commercial practices. The BPRs relate, primarily, to business-to-business advertising, and are intended to protect UK traders from other unscrupulous businesses, whilst the CPRs apply to any business practices which have the potential to affect consumers (either directly or indirectly).
In broad terms, any deceptive advertising or other representation relating to, or made in connection with, a trade or business that misleads traders or consumers in a way that is likely to affect their economic behaviour, or injure a competitor, will be misleading. The BPRs and CPRs will apply to advertising relating to the Diamond Jubilee that, for example, misleads the public or other traders into thinking a particular business or product has been officially authorised by the Royal Family. Any contravention of the BPRs or CPRs is punishable by a fine and/or a maximum of two years’ imprisonment.
Retailers will therefore have to bear in mind a range of legal issues, regulations and guidance when considering making reference to the Queen's Diamond Jubilee in advertising, on products and souvenirs, or otherwise in connection with their business.
However, it seems unlikely that the Royal Family will intervene in respect of unapproved memorabilia or commercial activity, unless the context of the advertising or product is in very “poor taste”. It is more likely that there will be complaints from Royal enthusiasts to the ASA or to Trading Standards about advertising in connection with the Diamond Jubilee.