Olympic and Paralympic Marks Act comes into force
The Canadian Olympic and Paralympic Marks Act has come into force. The act was introduced in anticipation of the 2010 Olympic and Paralympic Winter Games in Vancouver. Its purpose, as described in the Regulatory Impact Analysis Statement issued in support of the regulations under the act, is to provide:
"protection for Olympic and Paralympic marks, protection against false and unauthorized associations between a business, its goods or services, and the Olympic or Paralympic Games, or certain committees associated with those games (ambush marketing)... [the act also] makes it easier to obtain timely interim or interlocutory injunctions against infringers/ambush marketers. The act will help maximize private sector partnership for present and future games, and will deter non-partners from attempting to capitalize on the goodwill of the Olympic movement."
The broad sweep of the act may also make it a trap for the unwary.
The act protects two types of Olympic and Paralympic marks. The first category includes marks such as OLYMPIC and OLYMPIAD, applicable to all Olympic and Paralympic Games. The second category includes marks specific to the Vancouver Games (ie, VANCOUVER 2010 and SEA TO SKY GAMES). Protection of the second category of marks extends only to December 31 2010.
The Olympic and Paralympic marks receive broad protection under the act - much broader than that accorded to ordinary trademarks. Section 3 provides that no person shall adopt or use the following in connection with a business, as a trademark or otherwise, without the consent of the Canadian Olympic Committee or the Canadian Paralympic Committee:
- the Olympic and Paralympic marks;
- a translation into any language of the Olympic and Paralympic marks; or
- any mark that so nearly resembles one of the Olympic and Paralympic marks so as to be likely to be mistaken therefore.
The act does not prevent the use of a mark that was in use in Canada prior to March 2 2007, provided that any subsequent use is in association with:
- the same goods or services for which the mark was used or registered prior to March 2 2007; or
- goods and services of the same general class.
Moreover, the act does not prevent someone from using a mark such as OLYMPIAN to refer to their own participation in the games, nor does it prevent the use of the Olympic and Paralympic marks in news reports relating to the games, or for the purpose of criticism or parody relating to the games.
The act also contains a general prohibition against passing off. In essence, between December 17 2007 and December 31 2010, no person shall promote or direct public attention to his or her business in a manner that misleads or is likely to mislead the public into believing that there is a connection between the business and the games. Of particular interest, the act provides that in assessing whether a person has passed off his or her business, the court shall consider any evidence that the person has used any combination of the expressions listed in Schedule 3 of the act (eg, games, 2010, 21st, 10th, medals, winter, gold, silver, bronze and sponsor).
Finally, during the period between December 17 2007 and December 31 2010, the Canadian Olympic Committee or the Canadian Paralympic Committee can seek interim or interlocutory injunctions without having to show irreparable harm - something that any ordinary trademark owner must show in order to obtain such relief.
Over the next three years, trademark professionals in Canada will have to keep the list of marks protected under this act close by their side so as to ensure that their clients do not risk falling foul of the broad sweep of the act.
Robert A MacDonald, Gowling Lafleur Henderson LLP, Ottawa
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