Shortly after Vancouver was selected as the host site for the 2010 Winter Olympic Games, numerous news reports emerged concerning the efforts of the Canadian Games organizers to prevent local businesses from using various names and symbols associated with the Olympics.
A sometimes heated debate has developed, as long-established local businesses were targeted along with upstart opportunists. With the federal government's March 2nd introduction of Bill C-47, the proposed Olympic and Paralympic Marks Act (the "Olympic Marks Act"), a powerful new enforcement tool was created. Bill C-47 will provide protection for marks related to the Olympic and Paralympic Games and strengthen intellectual property rights for 2010 organizers.
In its proposed form, Section 3 of Bill C-47 prohibits the unauthorized use of prescribed words and symbols (including translations or confusingly similar variations). Section 4 prohibits misleading commercial activities that falsely suggest an affiliation with the Games. Both of these prohibitions expire when the need to protect the designations and affiliations no longer exists.
Olympic and Paralympic marks are defined in the Act and include marks such as Canadian Olympic Committee; Faster, Higher, Stronger; Olympic; Paralympic; Vancouver Games; Games City; and Whistler Games.
Section 3(1) of Bill C-47 resembles Section 9 of the Trade-marks Act (Canada), which grants extensive protection to marks owned by "public authorities." Section 9 of the Act prohibits commercial adoption of a variety of marks, including the Royal Arms, the emblem of the Red Cross, national flags, scandalous words and others that falsely suggest a connection with a living individual.
Enforcement of protected Olympic marks is made easier as the standard of proof for infringement is less than that typically required. Under the Trade-marks Act, the owner of a trade mark must prove that an offending mark is "confusing with" the registered trade mark and, in that regard, the courts will assess not only the degree of distinctiveness of the marks, but will consider differences in the goods or services associated in the respective trade channels.
Under Bill C-47, the test will be whether the offending mark can be "mistaken for" any of the prescribed Olympic trade marks. This requires the enforcing party to demonstrate only that the offending mark is the same as, or so nearly resembles, the Olympic marks in order to establish infringement. Accordingly, under Bill C-47, Olympic organizers will not need to prove similarity of the goods or services or the use of similar channels of trade. It is not relevant that a reasonable person would not confuse the use of a protected Olympic trade mark in a particular commercial venture, whether it be selling used cars or operating a laundry, with any official Olympic Games function. This is similar to the test that applies in relation to marks owned by "public authorities" under Section 9 of the Trade-marks Act.
It is important to note that there are exceptions to these prohibitions, including trade marks in use or registered before March 2nd and the extent of the wares and services those trade marks were used or registered as of that date. Other exceptions include official marks in which notice was given under Section 9(1)(n) of the Trade-marks Act before March 2nd.
Bill C-47 provides broader protection for prescribed marks than is otherwise available under the Trade-marks Act because prohibited uses of trade marks are not restricted to use in association with the sale or performance of particular goods or services. Section 3 prohibits "use in connection with a business, as a trade mark or otherwise." However, Section 3 also provides a "fair dealing" type exception by expressly permitting the use of the prescribed marks in the publication or broadcasting of news reports or for the purposes of criticism relating to the Games.
Enforcement under Bill C-47 will occur by way of an application to the Federal Court of Canada or in a provincial superior court. The Court will determine remedies appropriate in the circumstances, including an injunction, damages, an accounting of profits, punitive damages, the destruction of offending materials or the publication of a corrective advertisement. Obtaining injunctive relief has been made easier because Section 6 eliminates the need for the applicant to prove that it will suffer irreparable harm.
The only persons with standing to commence an application under Bill C-47 are the Canadian Olympic Committee, the Canadian Paralympic Committee, official organizing committees and authorized persons, such as sponsors.
The Canadian Olympic Committee previously aggressively sought to restrict use of Olympic marks. Assuming Bill C-47 is passed into law, it will have a powerful new tool at its disposal. Anyone seeking to link their business with any of the names or symbols associated with the 2010 Winter Olympic Games would be well advised to proceed with great caution