KEY POINTS

  • The Major Sporting Events (Indicia and Images) Protection Bill 2014 (Cth) is currently before Parliament.
  • The Bill will apply to major sporting events including The Asian Football Confederation Asian Cup 2015, The Cricket World Cup 2015 and The Gold Coast 2018 Commonwealth Games.
  • The Bill seeks to protect Major Sporting Events’ images and indicia (including words associated  with the Major Sporting Events, such as “Queen’s Baton Relay”, with respect to the Commonwealth Games) against commercial exploitation by bodies other than the event body responsible for the major sporting event.
  • The language and reach of the Bill is very broad.
  • Any person who commercially uses a major sporting event’s protected indicia or images, without the prior approval of the event body may be subject to an order for damages, an injunction, ordered to publish a corrective statement (disclaiming any association with the major sporting event) or their goods may be seized by Australian Customs.

Protection of Images & Indicia

The Major Sporting Events (Indicia and Images) Protection Bill 2014 (Cth) (Bill) prohibits the commercial use of Protected Indicia by persons other than the event body, unless the event body has authorised another person, or body, to use the event’s Protected Indicia (Prohibition).

The Bill provides a list of what indicia and images are protected for the Major Sporting Events (Protected Indicia); for example, the following words and  phrases are some of the Protected Indicia for the Commonwealth Games: “Australian Commonwealth Games”, “GC18” and “Queen’s Baton Relay” (Primary Words).  Furthermore, if Primary Words are used in conjunction with other listed words, such as “agent”, “caterer”, “city” or “product”, then these phrases are also Protected Indicia.

The Bill also provides that where indicia or images are used which ‘so closely resembles’ Protected Indicia, where a reasonable person may mistake the indicium or image as being Protected Indicia, the used indicia or images are also Protected Indicia.

“Commercial use” includes where Protected Indicia are “applied to” a person’s goods or services or used for advertising purposes, provided that such uses would, to a reasonable person, suggest that the user was a sponsor or support provider of a major sporting event. “Applied to” is broadly defined to include where the Protected Indicia are ‘woven in, impressed on … or affixed to the goods’, and it also includes the use of Protected Indicia on invoices, price lists, catalogues, brochures, and presumably menus.

Interaction with Other Laws

The provisions of the Bill are not intended to limit the application of other Commonwealth laws: remedies obtainable pursuant to the Bill are additional to those which may be available to the event body under  other laws, such as the Australian Consumer Law, with respect to misrepresentations or the Trade Marks Act 1995 (Cth), with respect to trade mark infringement.  The Bill also operates alongside certain State legislation; for example, with respect to the Commonwealth Games, the Bill operates in tandem with the Commonwealth Games Arrangements Act 2011 (Qld) (Queensland Act).

Permissible Use

The event body for the major sporting event may authorise other persons to commercially use the Protected Indicia for that major sporting event (Authorised User).  With respect to the Commonwealth Games, the Bill recognises authorisations granted to persons under the Queensland Act, which permit the commercial use of Commonwealth Games’ Protected Indicia by such persons.

The Bill also permits Protected Indicia to be used for the ‘primary purpose’ of ‘criticism and review’ and for the dissemination of information via news and current affairs’ platforms.

Implications

Persons and businesses need to be aware of what words and images constitute Protected Indicia for the Major Sporting Events.  They also need to ensure that they do not use Protected Indicia in any part of their business or marketing strategies, unless authorised  to do so.  By way of example, except with an authorisation, a restaurateur would not be permitted to develop and provide a “Commonwealth Games lunch” during the period in which the indicia are protected (i.e. any marketing flyers or menus with the words “Commonwealth Games lunch” printed on them would breach the Prohibition).

Persons who breach the Prohibition may be liable  to account for profits made, be subject to injunctive orders or liable for any loss which the event body, or an Authorised User, may suffer.  A corrective statement remedy may also be sought, whereby the person who breached the Prohibition may be ordered to publish (in a newspaper or on television, for example) a corrective advertisement explaining that there is no association between the person’s use of the Protected Indicia and the major sporting event.  Imported goods which breach the Prohibition may be subject to seizure by Australian Customs and potentially be forfeitable to the Commonwealth.