The Major Sporting Events (Indicia and Images) Protection Act 2014 (Cth) (Act) received royal assent on 27 May 2014. Most provisions of the Act will come into effect on 1 July 2014.
The Act was created to prevent the unauthorised commercial use of indicia and images associated with certain major sporting events. The major sporting events are identified in the Schedules to the Act and currently include the following upcoming events:
- the Asian Football Confederation Asian Cup 2015;
- the International Cricket Council Cricket World Cup 2015; and
- the Gold Coast 2018 Commonwealth Games.
The Act will provide protection to certain rights holders when the Trade Marks Act 1995 (Cth) and Copyright Act 1968 (Cth) would be unable to offer protection or recourse, for example, not all signs are capable of attaining registration as a trade mark.
Some of the purposes of the Act are to:
- Offer protection against ambush marketing;
- Protect sponsors of events in the hope that this will result in event holders being able to charge a premium for sponsorship rights to generate a greater revenue stream from the major sporting event and to attract more sponsors now that certain rights are offered greater protection by the Act. The Australian government hopes that the additional revenue stream generated from sponsorship of the major sporting event means that event holders will require less funding and financial support from the government; and
- Ensure Australia is able to effectively host an international sporting event.
The Act is drafted in general terms with the Schedules to the Act identifying the major sporting events to which the provisions will apply which will allow for the addition of future sporting events as Schedules to the Act.
The Act provides, generally, that a person cannot use a major sporting event’s protected indicia or images for 'commercial purposes' during the event’s protection period, unless the person is an official user for the event or is authorised to use such images and indicia by a person authorised to allow such use, for example, the event body.
Section 12, provides that a person (the user) uses a major sporting event’s protected indicia or images for commercial purposes if:
- The user causes the event’s protected indicia or images to be applied to the user’s goods or services; and
- The application is for the primary purpose of advertising or promoting, or enhancing the demand for, the goods or services; and
- The application would suggest, to a reasonable person, that the user is or was a sponsor of, or is or was the provider of other support for:
- The major sporting event; or
- Any other event arranged by an event body for the major sporting event in connection with the major sporting event.
Indicia or images
Some of the indicia which is protected by the Act and listed in the Schedules include "Commonwealth Games", "GC2018" and "ICC Cricket World Cup" among others. The images which are protected are not specified. Images are considered protected by the Act if they relate to the major sporting event.
Customs to seize infringing Goods
Part 4 of the Act deals with the importation of goods that have had a major sporting event’s protected indicia or images applied to them. The Act gives Australian Customs' officers the power to seize goods and forfeit them to the Commonwealth if the designated owner’s use of the indicia or images is for commercial purposes, in relation to the goods to which the images or indicia are applied in contravention of the Act.
There are a number of remedies available to official users for a major sporting event, such as injunctions, damages or an account of profits, and corrective advertisements. Some official users need consent before seeking these remedies.Groundless threats of legal action
The Act does put into place some checks and balances to stop rights holders threatening legal action if they do not in fact have rights to protect under the Act. If an official user of protected indicia or images makes a groundless threat to bring legal action pursuant to the Act, any person aggrieved may bring an action in a relevant court seeking a declaration or injunction, or damages for loss that the person has suffered as a result of the threat.
Businesses intending to advertise, sell, or offer for sale, goods or services that relate to, or are in some way connected with, upcoming major sporting events protected by the Act should ensure that they do not use any protected indicia or images (as well as any intellectual property of, or associated with, the sporting event, registered or otherwise) unless authorised to do so.