Legislative Summary
Bill C-47: The Olympic and Paralympic Marks Act
Andrew Kitching, Law and Government Division
Marc-André Pigeon, Economics Division
2007-04-30
Revised on: 2007-09-26
Publication No. 39-1-LS-555-E
PDF 1000, (18 Pages) PDF

Table of Contents


Introduction

Intellectual property law consists of a set of legally enforceable rights that attach to certain types of information, ideas, innovations or other concepts in their expressed form.  A trade-mark is a distinctive sign or symbol used to uniquely identify products and services to consumers, and to distinguish them from competing products or services.  In Canada, trade-mark rights are protected under the federal Trade-marks Act.(1)

Bill C-47, the Olympic and Paralympic Marks Act,(2) was introduced in the House of Commons by the Minister of Industry, the Hon. Maxime Bernier, on 2 March 2007.  Bill C-47 creates a separate legal framework for Olympic trade-marks in anticipation of the Olympic Games to be held in Vancouver in 2010.  The bill gives the Vancouver Organizing Committee of the 2010 Olympic and Paralympic Games (the Organizing Committee) considerable powers to prevent the use of Olympic marks by businesses or individuals seeking to profit from an unauthorized association with the 2010 Games.  The provisions that will be enacted by Bill C-47, however, are not exclusively tailored to the 2010 Games and could apply to any Olympic Games that Canada may choose to host in the future.(3)

Bill C-47 extends protection to a set of images, words, and expressions associated with the Olympic Games in general and the 2010 Vancouver Olympic Games and Paralympic Games in particular.(4)  It also extends trade-mark protection to any marks or promotions that, if used without authorization by a business, are likely to mislead the public into believing that the business is an official sponsor of the Games.  This provision appears to be an attempt to curtail so-called “ambush marketing.”  Finally, the bill provides applicants with expeditious access to injunctions against anyone believed to be in violation of the legislation.

Description and Analysis

A.  Trade-mark Provisions

Trade-marks in Canada are granted through registration, which constitutes evidence of ownership.  The registration process is designed to discourage trade-mark infringement by ensuring that new registrations do not conflict with existing trade-marks and by allowing applications to be challenged.

Trade-mark registration involves:

  • a preliminary search of existing trade-marks;
  • an application;
  • an examination by the Trade-marks Office;
  • publication of the application in the Trade-marks Journal;
  • opposition, through a challenge to the application; and
  • registration, in the event there is no opposition.

The trade-mark provisions of the bill effectively register the trade-marks set out in Schedules 1, 2 and 3 of Bill C-47.

1.   Definitions (Clause 2)

Clause 2 defines terms used in Bill C-47, including the Canadian Olympic Committee (COC), the Canadian Paralympic Committee (CPC), and any “organizing committee” responsible for planning Olympic events.

Clause 2 also contains a definition of the term “mark.”  An “Olympic and Paralympic mark” is defined as any mark set out in Schedule 1 or 2 of Bill C-47.  Schedule 1 marks include terms such as “Olympics” and “Olympia,” short phrases such as “Faster, Higher, Stronger” and “Spirit in Motion,” and images such as the Olympic rings and the Vancouver 2010 inukshuk logo (i.e., a traditional Inuit stone sculpture).  Schedule 2 marks deal more specifically with the 2010 Vancouver games and will apply only until 31 December 2010.

2.   Prohibited Marks (Clause 3)

Clause 3 begins by prohibiting the use of “Olympic and Paralympic marks,” any translations thereof, or any “mark that so nearly resembles an Olympic or Paralympic mark as to be likely to be mistaken for it” in connection with a business conducted by any entity or person other than the COC, CPC, or an organizing committee.

Clause 3(4) sets out several exceptions or limitations to the general prohibition and lists people and entities that have the right to use “Olympic and Paralympic marks” or any mark that resembles these marks.  These include:

  • Approved users:  A person who has obtained written approval from the Organizing Committee, the COC, or the CPC to use the mark(s) and acts accordingly.
  • Trade-marks used before 2 March 2007:  Anyone with a trade-mark – or license to use a trade-mark – who used that trade-mark before 2 March 2007 or before publication in Part I of the Canada Gazette of an order that adds an Olympic or Paralympic mark to Schedule 1 or 2 of the proposed legislation can continue to use the trade-mark.  However, only the same goods and services or goods and services of the same general class as had been sold before Bill C-47 was introduced are eligible for this exemption.
  • Public authorities:  The federal or provincial governments, a university or a public authority, or a person authorized by any of these entities, may use trade-marks on any badge, crest, emblem or other mark provided these entities have given notice under the Trade-marks Act before 2 March 2007 or before publication in Part I of the Canada Gazette of an order that adds an Olympic or Paralympic mark to Schedule 1 or 2.
  • Wine or Spirit Labels:  Clause 3(4)(f) exempts wine or spirits bottles provided the labels use a “protected geographical indication” and provided the wine or spirits come from the indicated territory.
  • Addresses, Geographic Place Names:  Clause 3(4)(g) exempts addresses and geographic place names for businesses provided they accurately describe the origins of the goods and services in question or are necessary to explain the goods and services to the public.
  • Personal Names:  Clause 3(4)(h) exempts personal names from the general prohibitions.
  • Olympians:  Clause 3(4)(i) exempts Olympians past and present from the general prohibition.  It also exempts from the general prohibition persons who have an Olympian’s consent to use Olympic symbols.
  • News Reporting and Criticism:  Clause 3(5) explicitly exempts news reporting and criticism of the Olympic Games and Paralympic Games.
  • Artistic Work:  Artistic works, as defined in the Copyright Act, are also exempted from the general prohibition provided they are not reproduced on a commercial scale.

The exceptions listed above are framed in legal terms that suggest they are exhaustive, which would mean that every mark falling outside of the exceptions would be prohibited.

3.   Prohibited Acts (Ambush Marketing) (Clause 4)

Clause 4 prohibits any act that might mislead, or is likely to mislead, the public into believing that a person or entity’s goods and services are “approved, authorized or endorsed” or have some kind of business association with an organizing committee, the COC or the CPC.  This clause is aimed at minimizing “ambush marketing,” which has been defined as “a company’s intentional efforts to weaken – or ambush – its competitor’s ‘official’ sponsorship by engaging in promotions and advertising that trade off the event or property’s goodwill while seeking to confuse the buying public as to which company really holds official sponsorship rights.”(5)  For example, during the 2006 FIFA World Cup, Lufthansa painted the nose cones of its passenger jets with an image of a soccer ball, even though they were not official sponsors of the tournament.(6)

Clause 4(2) further requires the court to consider the extent to which the person or entity used a combination of the “expressions” listed in Schedule 3 (see Appendix A).(7) Finally, clause 4(3) contains a saving provision that exempts the placing of advertisements that are “in proximity” to printed or electronic material containing an Olympic or Paralympic mark, which would mean, for example, that a television crew that filmed footage that included Olympic marks would not be liable under Bill C-47.

B.  Remedies and Enforcement Provisions

Disputes between parties under the Trade-marks Act can be brought before the Federal Court of Canada or any provincial superior court.

An interim (or interlocutory) injunction is a court order used to temporarily stop something from being done pending a full trial to determine the facts.  For example, if the building of a retaining wall would cause flooding on a neighbour’s land, the neighbour can get an interim injunction to stop the retaining wall from being built pending resolution of the dispute.  When granting an interim injunction, the Court can require an undertaking from the applicant that, if the Court ultimately finds that the injunction should never have been granted in the first place, the applicant will be able to pay for any damages arising from the injunction.

When a trade-mark is violated, the injured party can apply for an injunction forcing the offending party to stop using its trade-mark.  The law of trade-marks generally requires that the owner of a trade-mark demonstrate that he or she will suffer “irreparable harm” in order to be granted an injunction against the party that has violated the trade-mark.  In other words, the applicant is required to show the Court that the injunction is needed because the injury could not be adequately compensated by damages, if and when the alleged infringement eventually goes to a full hearing.  Bill C-47 alters the test to make it easier for the injured party to obtain an injunction and gives the courts wide powers to determine a remedy in the event of a successful application.

1.   Filing an Application and Remedies (Clauses 5, 6, 7)

Under clause 5 of Bill C-47, the COC, the CPC, or the Organizing Committee can make a court application against any person or any entity they believe has violated clauses 3 and 4.  A private party (licensee) can also seek redress for a violation of the provisions of Bill C-47, but only if they have received written authorization.  During a “prescribed period” (to be specified in as-of-yet-unpublished regulations), only the Organizing Committee has the unfettered power to make an application to the court.  The COC, CPC and any licensee must get the written consent of the Organizing Committee to make an application.(8)  Outside the “prescribed period,” the COC and CPC are primarily empowered to enforce the provisions of the bill and could potentially prevent the Organizing Committee or a licensee from proceeding with the application.  In both cases, however, authorization to proceed with an application cannot be unreasonably withheld.

In the event the application is successful, clause 5 allows the Court to impose an order that it considers appropriate under the circumstances.  This order might include:

  • an injunction to immediately cease production and/or distribution of the offending goods and services;
  • compensation for lost profits and punitive damages;
  • publication of a corrective advertisement by the offending party;
  • destruction, exportation or other dispositions of the offending “wares, packages, labels and advertising materials,” including dies used in producing these items.

Under clause 6, an interim or interlocutory injunction can be granted for any act that is claimed to violate clauses 3 or 4, without the applicant having to demonstrate that he or she has suffered irreparable harm.  This modification of the test for the granting of an interim injunction applies only for a period of time prescribed by regulation.

Clause 7 imposes a limitation period, stating that the Court cannot award damages unless the injured party files an application within three years of the violation of the provisions of Bill C-47.

The legislation is silent on whether the Court can require the applicant to provide an undertaking as to damages; presumably, the granting of an injunction could be made conditional on the provision of an undertaking.

2.   Court Orders on Imported Items (Clauses 8, 9, 10)

Clause 8(1) allows a court to order the Minister of Public Safety and Emergency Preparedness (the Minister) to detain any imported items that an applicant claims will violate clause 3 of the bill.  The Court may also ask the Minister to notify interested parties, and the application can be made ex parte (without notice to the person whose goods are being detained).

If the Court finds that the detained items do in fact constitute a violation of clause 3, it may order that the items be destroyed, exported outside of the country, or delivered to the applicant.(9)  Under clause 8(2), the applicant may be the Organizing Committee, the COC or the CPC.  Again, the legislation distinguishes between the “period prescribed by regulation” and “any other period.”  In the case of the former, the COC and CPC must seek written permission from the Organizing Committee.  If no answer is forthcoming within 10 days of receipt of the request, the application may proceed.  In the case of the latter, the Organizing Committee must obtain written consent.  Private parties or licensees are not empowered to make an application for the detainment and seizure of goods at Canada’s borders; they would have to convince the Organizing Committee, COC or CPC to act on their behalf.

Clause 8(5) allows the court to require the applicant to furnish undertakings:  i.e., security to cover duties, storage and handling charges associated with seizing the items, and to cover any damages that may be suffered by the owner/importer.  Clause 8(6) allows the Minister to ask the Court for direction in implementing an order made under the detention provisions.  Under clause 8(7) the Minister can allow an inspection of detained goods for evidentiary purposes.  Clause 8(8) requires the Minister to release the seized items without further notice if an action has not been commenced within two weeks of notification.  Clause 9 stipulates that if the court orders the exportation of goods, the offending trade-marks must be removed.

Clause 10 grants the Federal Court of Canada the jurisdiction to hear any actions initiated under the provisions of Bill C-47.

3.   Regulation-making Powers and Coming Into Force (Clauses 12, 13)

Clause 12 allows the Governor in Council to make regulations prescribing the marks that will be subject to the enhanced trade-mark protection (adding to or deleting from those listed in schedules 1, 2, and 3) and prescribing the length of time the enhanced protection will be in effect.

Under clauses 13 and 15(2), the marks registered under schedule 2 and schedule 3 will expire on 31 December 2010.  Clause 14 amends the Trade-marks Act to prevent the registration of any marks covered by Bill C-47.  Under clause 15(1), most of the provisions of Bill C-47 will come into force on a date fixed by the Governor in Council.

Commentary

Bill C-47 enhances the protection for Olympic symbols beyond that normally afforded to trade-marks.  Although existing intellectual property law in Canada could arguably be used to protect Olympic symbols and marks, the sheer volume of possible violations, within a short window of time, are presumed to be the justification for the enhanced protection.

There has been substantial debate about tactics used in connection with sporting events to discourage the use of ambush marketing.  In the United Kingdom, a statute was recently passed that, among other things, will outlaw ambush marketing for the 2012 Olympics.(10)  A coalition of advertisers argued that this legislation was draconian and overly restrictive. Citing one example, the legislation would not allow a business to say “come to London in 2012.”(11)  Advertisers in Britain viewed these restrictions as potentially damaging to the economic “halo effect” that the Olympics promises to bring, stating that “London businesses in particular will be paying for these Games but they are being deprived of benefiting from them because they will basically have to pretend they are not happening.”(12)

There are also accusations that prohibitions against ambush marketing can be carried too far.  In one of the more bizarre examples of an attempt to prevent ambush marketing, more than 1,000 Dutch fans at the FIFA 2006 World Cup match in Germany were forced to relinquish their orange lederhosen during a game against the Ivory Coast.  The lederhosen were stamped with the name “Bavaria,” although Bavaria Brewery (Netherlands) was not an official World Cup sponsor.  When Dutch fans tried to enter the stadium, they were required by FIFA officials to abandon their lederhosen, and were forced to watch the game in their underwear.(13)  Before this incident, Heineken, an official sponsor of the Dutch football association, had taken legal action against Bavaria Brewery in Holland but lost; the Dutch judge had ruled that fans could wear whatever they wanted.

As proposed, Bill C-47 appears to address some of these concerns.  Although it clearly strengthens the ability of the COC, CPC, and Organizing Committee to seek injunctions against any marks presumed to be encroaching on the Olympic brand, it also imposes limits on the legal reach of these powers through the exceptions.  Criticism, for example, is protected, as is the use of Olympic symbols in news coverage.  Firms whose use of related symbols pre-dates the Games are similarly protected, as are wine and spirit makers who use any of the terms listed in schedules 1, 2, and 3 to describe the origins of their products.  Similarly, the interim injunctions in which irreparable harm need not be proved, could be, under Bill C-47, made available only for a short window of time.

There have been media reports that the popularity of ambush marketing in Canada is diminishing, and, in any event, there were few instances of the practice during the 2006 Turin games.(14)  Ultimately, however, public support for the proposed legislation is likely to depend on whether the COC, CPC and Organizing Committee are trusted to exercise their new-found powers with restraint.  Incidents such as the one involving Dutch football fans would likely be greeted with derision, as they were in Europe.  At least one commentator in Vancouver has observed that early indications of an over-reach of trade-mark law by the Organizing Committee could stifle protest art, and criticism of the 2010 Games.(15)


Endnotes

* Notice: For clarity of exposition, the legislative proposals set out in the bill described in this Legislative Summary are stated as if they had already been adopted or were in force. It is important to note, however, that bills may be amended during their consideration by the House of Commons and Senate, and have no force or effect unless and until they are passed by both Houses of Parliament, receive Royal Assent, and come into force.
  1. R.S., 1985, c. T-13.
  2. An Act respecting the protection of marks related to the Olympic Games and the Paralympic Games and protection against certain misleading business associations and making a related amendment to the Trade-marks Act, 39th Parliament, 1st Session, 2007.
  3. The term “organizing committee” does not specifically refer to the Vancouver 2010 Organizing Committee.  For clarity, this Legislative Summary uses the term “Organizing Committee” for the Vancouver 2010 Organizing Committee.  If Canada were to host the Olympic Games in the future, the trade-marks for those games could be prescribed by regulation under the schedules, without amending the Olympic and Paralympic Marks Act itself.
  4. These images, words and expressions are spelled out explicitly in three schedules included in Bill C-47 and appended to this legislative summary as Appendix A.
  5. Steve McKelvey, “Sans Legal Restraint, No Stopping Brash, Creative Ambush Marketers,” Brandweek, 18 April 1994.
  6. Doreen Carvajal, “Can’t tell the sponsors without a scorecard,” International Herald Tribune, 31 May 2006.
  7. Schedule 3 is comprised of two parts.  The first part lists expressions that appear to be grouped thematically around the fact that Vancouver is hosting the 21st Winter Games (Games, twenty-first, and 21st) and that these games will occur in the year 2010, while the second part lists words that thematically relate to medals (gold, silver, bronze), the location of the games (Vancouver, Whistler), the fact that they are winter games (Winter) and are sponsored (sponsor).
  8. If the Organizing Committee fails to respond within 10 days, the application can proceed notwithstanding the lack of written consent.
  9. It is unclear why in this instance (8(1)(b) of C-47 mentions only clause 3 but not clause 4, which prohibits ambush marketing.  It is unclear why imported “ambush marketing” goods are not subject to detention and seizure at Canada’s borders.
  10. London Olympic Games and Paralympic Games Act 2006, c. 12.
  11. Andrew Fraser, “Olympics bill comes under attack,” BBC Sport, 16 August 2005.
  12. Ibid.
  13. Luke Harding and Andrew Cuff, “The new World Cup rule:  take off your trousers, they’re offending our sponsor,” Guardian Unlimited, 19 June 2006.
  14. Keith McArthur, “Piggybacking on Olympic ads losing favour,” The Globe and Mail, 14 February 2006.
  15. Pieta Woolley, “Do Olympic rings bind art?The Georgia Straight, 25 May 2005.

 


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