Legislation to protect Winter Games marks introduced

The Canadian government has tabled new legislation which would provide special time- limited IP protection for Olympic and Paralympic words and symbols associated with the Vancouver 2010 Winter Games. Bill C-47, also known as The Olympic and Paralympic Marks Act, strengthens the exclusive rights of the Vancouver Organizing Committee for the 2010 Olympic and Paralympic Winter Games (VANOC) over these words and symbols in an effort to improve its ability to negotiate sponsorship agreements with businesses interested in associating themselves with the 2010 Winter Games, and prevent non-sponsors from advertising in a manner that falsely suggests a business connection with the games, otherwise known as ambush marketing.

Some of the notable provisions of the proposed legislation include the following:

• Section 3 of the act prohibits any person from adopting or using in connection with a business, as a trademark or otherwise, an Olympic or Paralympic mark (or a mark that is a translation in any language thereof) or a mark that so nearly resembles an Olympic or Paralympic mark as to be likely to be mistaken for it. The list of Olympic and Paralympic marks is set out in Schedules 1 and 2 of the legislation.
  
  
• Section 4 of the act prohibits any person from promoting or otherwise directing public attention to a business in a manner that misleads or is likely to mislead the public into believing that there is an association between the person's business and the Olympic Games, the Paralympic Games, an organizing committee, the Canadian Olympic Committee, or the Canadian Paralympics Committee, or that the business has been approved, authorized or endorsed. In determining whether a person has acted contrary to this provision, a court shall take into account the use of a combination of the expressions set out in Part 1 of Schedule 3 of the act ('Games', '2010', 'Twenty-ten', '21st', 'Twenty-first', 'XXIst', '10th', 'Tenth', 'Xth' and 'Medals') or a combination of an expression in Part 1 of Schedule 3 with an expression in Part 2 of that schedule ('Winter', 'Gold', 'Silver', 'Bronze', 'Sponsor', 'Vancouver' and 'Whistler').
  
  
• Section 5 of the act sets out the potential remedies, which include injunctions, damages, punitive damages, publication of corrective advertisements, and destruction, exportation or other disposition of any offending goods, packages, labels and advertising material, and the dies used to apply to those materials.
  
  
• Section 6 of the act provides that if an interim or interlocutory injunction is sought in respect of an action that is claimed to be contrary to Section 3 or 4, an applicant is not required to prove that it will suffer irreparable harm.

The bill contains a 'sunset' clause, which will result in the automatic termination of some of the protections provided under the legislation once the Vancouver 2010 Winter Games is completed.

With respect to prior use by businesses of the name Olympic or similar terms in their names and marks, VANOC has advised that it will not require that these businesses cease or modify their use of the name Olympic or similar terms if they began using those marks prior to January 1 1998, when it became widely known that the Canadian Olympic Committee had awarded to Vancouver the right to make a bid to the International Olympic Committee for the 2010 Winter Games.

Assuming the legislation is passed, it will be interesting to see how it is applied by VANOC.

Albert Chang, Gowling Lafleur Henderson LLP, Ottawa