Olympics

Slide1 : Mark Engelman Head of IP Group Hardwicke Building • New Square • Lincoln’s Inn London • WC2A 3SB • United Kingdom London Olympic and Paralympic Games Act 2006 The Olympic Symbols etc Protection Act 1995 22 January 2008 ITMA The Royal College of Surgeons


Slide2 : Mark Engelman Head of IP Group Hardwicke Building • New Square • Lincoln’s Inn London • WC2A 3SB • United Kingdom THE OLYMPICS 26 Olympic sports in 31 venues 20 Paralympic sports in 21 venues 10,250 Olympic athletes and 4,000 Paralympic athletes 20,000 press and media Over 9 million tickets


Slide3 : Mark Engelman Head of IP Group Hardwicke Building • New Square • Lincoln’s Inn London • WC2A 3SB • United Kingdom The Olympics The 2 Acts background, essentials, scope new protected marks: symbols, words, mascots ambush marketing & advertising regulation LOCOG enforcement strategies infringement and defence strategies & EC law


Slide4 : Mark Egelman Head of IP Group Hardwicke Building • New Square • Lincoln’s Inn London • WC2A 3SB • United Kingdom Newly protected symbols The Paralympic symbol The London 2012 Olympic The Olympic symbol


Slide5 : Mark Engelman Head of IP Group Hardwicke Building • New Square • Lincoln’s Inn London • WC2A 3SB • United Kingdom The Team GB logo The Paralympics GB logo new protected LOGOS The British Olympic Association logo


Slide6 : Mark Engelman Head of IP Group Hardwicke Building • New Square • Lincoln’s Inn London • WC2A 3SB • United Kingdom new protected words ‘London 2012’ and ‘2012’ ‘Olympic’ ‘Olympiad’ ‘Olympian’ ‘Olympix’ ‘Paralympic’ ‘Paralympiad’ ‘Paralympian’  ‘Citius Altius Fortius’ / ‘Faster Higher Stronger’ ‘Spirit in Motion’ The British Olympic Association logo


Slide7 : Mark Engelman Head of IP Group Hardwicke Building • New Square • Lincoln’s Inn London • WC2A 3SB • United Kingdom London Olympic Games and Paralympic Games Act 2006 S.19 Advertising regulations advertising in the vicinity of London advertising of any kind including, in particular of a non-commercial nature advertising in any form distribution or provision of documents/articles display or projection of words, images, lights or sounds things done with or in relation to material which has or may have purposes or uses other than as an advertisement.


Slide8 : Mark Engelman Head of IP Group Hardwicke Building • New Square • Lincoln’s Inn London • WC2A 3SB • United Kingdom London Olympic Games and Paralympic Games Act 2006 Defences S. 21(1) A person commits an offence if he contravenes regulations under section 19 unless contravention of the regulations occurred: (a) without his/her knowledge, or (b) he/her took all steps to prevent it from occurring Tariff (3) A person guilty of an offence under subsection (1) shall be liable— (a) on conviction on indictment, to a fine, or (b) on summary conviction, to a fine not exceeding £20,000.


Slide9 : Mark Engelman Head of IP Group Hardwicke Building • New Square • Lincoln’s Inn London • WC2A 3SB • United Kingdom Olympic Symbol etc. (Protection) Act 1995 protects use of the Olympic Symbol Infringement includes: affixes it to goods or the packaging placing on a flag or banner offers or exposes for sale puts on the market stocks goods/packaging, imports or exports goods offers or supplies services uses it on business papers in advertising.


Slide10 : Mark Engelman Head of IP Group Hardwicke Building • New Square • Lincoln’s Inn London • WC2A 3SB • United Kingdom Olympic Symbol etc. (Protection) Act 1995 No infringement where: non intentional and use is in accordance with honest practices in industrial or commercial matters use not in relation to goods or services and in accordance with honest practices in industrial or commercial matters. descriptive use in a literary work, a dramatic work, a musical work, an artistic work, a sound recording, a film, a broadcast and a cable programme, about the Olympic games or the Olympic movement and without a view to gain for himself or another or with the intent to cause loss to another goods have been put on the market in the European Economic Area by the proprietor or with his consent, and the representation was used in relation to the goods when they were so put on the market. registration or use of a company name before commencement


Slide11 : Mark Engelman Head of IP Group Hardwicke Building • New Square • Lincoln’s Inn London • WC2A 3SB • United Kingdom Olympic Symbol etc. (Protection) Act 1995 Relief Civil damages, injunctions, accounts, order for erasure delivery up/ disposal of infringing goods Criminal a fine not exceeding the statutory maximum, and (b) on conviction on indictment, to a fine.


Slide12 : Mark Engelman Head of IP Group Hardwicke Building • New Square • Lincoln’s Inn London • WC2A 3SB • United Kingdom Case Study


Slide13 : Mark Engelman Head of IP Group Hardwicke Building • New Square • Lincoln’s Inn London • WC2A 3SB • United Kingdom Case Study On 15.05.07 a property building company places an advert in Hot Property On 07.07.06 LOCOG send letter of complaint raising: Art 9(1)(a)(b) and (c) CTMR; S.4 OSPA 1995 Passing Off


Slide14 : Mark Engelman Head of IP Group Hardwicke Building • New Square • Lincoln’s Inn London • WC2A 3SB • United Kingdom Case Study Undertakings Withdraw printed matter Destroy materials Retrieve stocks from third parties Undertake no direct/indirect association Damages Legal costs Undertakings by future directors Witness statement confirming obligations undertaken Keep undertakings confidential


Slide15 : Mark Engelman Head of IP Group Hardwicke Building • New Square • Lincoln’s Inn London • WC2A 3SB • United Kingdom Are these 2 Acts Ultra Vires the Paris Convention ? Article 6ter Prohibitions concerning State Emblems, Official Hallmarks, and Emblems of Intergovernmental Organizations  (1)(a) The countries of the Union agree… to prohibit .. the use, without authorization by the competent authorities, as trademarks or as elements of trademarks, of …names, of international intergovernmental organizations of which one or more countries of the Union are members (c) (2) Prohibition of the use of official signs …shall apply solely in cases where the marks in which they are incorporated are intended to be used on goods of the same or a similar kind.


Slide16 : Mark Engelman Head of IP Group Hardwicke Building • New Square • Lincoln’s Inn London • WC2A 3SB • United Kingdom Where primary legislation, such as the LOGPGA or OSPA contradicts the terms of the Paris Convention, the Court of dispute is the International Court of Justice, but only nation states not individuals have a right of appearance. Conflict between terms of the Paris Convention and LOGPGA or OSPA The Human Rights Point


Slide17 : Mark Engelman Head of IP Group Hardwicke Building • New Square • Lincoln’s Inn London • WC2A 3SB • United Kingdom The UK is a dualist system-meaning vis-vis international treaties, i.e., the Paris Convention, the rights/obligations have no effect unless legislated by Parliament. This took place in the form of: London Olympic and Paralympic Games Act 2006 The Olympic Symbols etc Protection Act 1995 Conflict between terms of the Paris Convention and LOGPGA or OSPA The Human Rights Argument


Slide18 : Mark Engelman Head of IP Group Hardwicke Building • New Square • Lincoln’s Inn London • WC2A 3SB • United Kingdom The UK can legislate statutes which are inconsistent with treaty obligations (R (Norris) v Home Secretary [2006] EWHC (admin) 280 BUT there have been instances of UK legislation being held by the ECHR to be in breach of the European Convention on Human Rights, e.g. Bellinger v Bellinger [2003] UKHL 21 - declaration of incompatibility) Conflict between terms of the Paris Convention and LOGPGA or OSPA The Human Rights Argument


Slide19 : Mark Engelman Head of IP Group Hardwicke Building • New Square • Lincoln’s Inn London • WC2A 3SB • United Kingdom Q: Is the Convention on Human Rights Applicable to intellectual property Law? A: Yes, Anheuser-Busch Inc v Portugal 2005 (application no:73049/01) Intellectual property undeniably attracted the protection of Art 1 of Protocol No: 1 as a “possession”. Conflict between terms of the Paris Convention and LOGPGA or OSPA The Human Rights Argument


Slide20 : Mark Engelman Head of IP Group Hardwicke Building • New Square • Lincoln’s Inn London • WC2A 3SB • United Kingdom Q: Is the right conferred upon LOCOG enabling it the protection of the international service marks as names, of an international intergovernmental organizations, i.e, The Olympic Committee, an infringement of Part II, The First Protocol, Article 1 Protection of Property: Every natural or legal person is entitled to the peaceful enjoyment of his possessions. No one shall be deprived of his possessions except in the public interest and subject to the conditions provided for by law and by the general principles of international law? Conflict between terms of the Paris Convention and LOGPGA or OSPA The Human Rights Argument


Slide21 : Mark Engelman Head of IP Group Hardwicke Building • New Square • Lincoln’s Inn London • WC2A 3SB • United Kingdom A: Are not the rights of individuals to the use of the protected signs in relation to service marks entitled to peaceful enjoyment of them that depravation is not in the public interest and not subject to the conditions provided for by law and not by the general principles of international law as represented by the provisions of the Paris Convention which expressly provides the opposite? Conflict between terms of the Paris Convention and LOGPGA or OSPA The Human Rights Argument


Slide22 : Mark Engelman Head of IP Group Hardwicke Building • New Square • Lincoln’s Inn London • WC2A 3SB • United Kingdom The effect of the 2 Acts is to prevent the free circulation of services employing the protected signs. Conflict between terms of the Paris Convention and LOGPGA or OSPA The Competition Issue


Slide23 : Mark Engelman Head of IP Group Hardwicke Building • New Square • Lincoln’s Inn London • WC2A 3SB • United Kingdom Article 28 Quantitative restrictions on imports and all measures having equivalent effect shall be prohibited between Member States. Article 29 Quantitative restrictions on exports, and all measures having equivalent effect, shall be prohibited between Member States. Article 30 The provisions of Articles 28 and 29 shall not preclude prohibitions or restrictions on imports, exports or goods in transit justified on grounds of … the protection of industrial and commercial property. Such prohibitions or restrictions shall not, however, constitute a means of arbitrary discrimination or a disguised restriction on trade between Member States. Conflict between terms of the Paris Convention and LOGPGA or OSPA


Slide24 : Mark Engelman Head of IP Group Hardwicke Building • New Square • Lincoln’s Inn London • WC2A 3SB • United Kingdom In relation to services “Directive on Services in the Internal Market” (Directive 2006/123/EC) in the UK. The Directive was agreed in December 2006 and the Government is required to transpose its requirements into UK law and practices before 28 December 2009: Abolishing restrictive legislation and practices that hinder service providers from setting up in or providing services within the EU. Conflict between terms of the Paris Convention and LOGPGA or OSPA


Slide25 : Mark Engelman Head of IP Group Hardwicke Building • New Square • Lincoln’s Inn London • WC2A 3SB • United Kingdom Art 15(1): Member States shall examine whether their legal system makes access to a service activity or the exercise of it subject to compliance with any of the following non-discriminatory requirements: quantitative or territorial restrictions Conflict between terms of the Paris Convention and LOGPGA or OSPA


Slide26 : Mark Engelman Head of IP Group Hardwicke Building • New Square • Lincoln’s Inn London • WC2A 3SB • United Kingdom Art 16: 1. Member States shall respect the right of providers to provide services in a Member State other than that in which they are established. The Member State in which the service is provided shall ensure free access to and free exercise of a service activity within its territory. Member States shall not make access to or exercise of a service activity in their territory subject to compliance with any requirements which do not respect the following principles: (b) necessity: the requirement must be justified for reasons of public policy, public security, public health or the protection of the environment; no mention of IP Conflict between terms of the Paris Convention and LOGPGA or OSPA


Slide27 : Mark Engelman Head of IP Group Hardwicke Building • New Square • Lincoln’s Inn London • WC2A 3SB • United Kingdom Q. Is the effect of LOGPGA and OSPA to operate as restrictions on free access to the Olympic branded services in question Ans: 1.The justification does not envisage protection of IPR. The restriction on the free movement of services is not contemplated by Art. Whether justified or not. 2. Even were it to apply to services can the restriction ever be justified when the industrial property right concerned has been legislated in contravention of an international treaty. Conflict between terms of the Paris Convention and LOGPGA or OSPA


Slide28 : Mark Engelman Head of IP Group Hardwicke Building • New Square • Lincoln’s Inn London • WC2A 3SB • United Kingdom Rather than bring proceedings before the International Court, enforcement of the 2 Acts as they relate to services should be a matter for the ECJ upon the interpretation of Arts 28-30. Case C‑213/89 Factortame and Others [1990] ECR I‑2433 Spanish fishing company appealed in the UK courts against restrictions imposed on them by the UK government under the Merchant Shipping Act 1988. which prevented companies using foreign ships registered as British vessels from fishing in UK waters. Factortame argued that they were permitted to fish under EU law.


Slide29 : Mark Engelman Head of IP Group Hardwicke Building • New Square • Lincoln’s Inn London • WC2A 3SB • United Kingdom Factortame cont. The House of Lords referred the case to the ECJ, ruling they did not have the power to suspend Acts of Parliament. The ECJ ruled that national courts could dis-apply legislation that contravened EU law. Consequently, the House of Lords ruled in favour of Factortame, meaning that in effect the Merchant Shipping Act 1988 was struck down.


Slide30 : Mark Engelman Head of IP Group Hardwicke Building • New Square • Lincoln’s Inn London • WC2A 3SB • United Kingdom Infraction Proceedings Art 226: If the Commission considers that a Member State has failed to fulfill an obligation under this Treaty, it shall deliver a reasoned opinion on the matter after giving the State concerned the opportunity to submit its observations. If the State concerned does not comply with the opinion within the period laid down by the Commission, the latter may bring the matter before the Court of Justice. Art. 228: 1. If the Court of Justice finds that a Member State has failed to fulfill an obligation under this Treaty, the State shall be required to take the necessary measures to comply with the judgment of the Court of Justice.


Slide31 : Mark Engelman Head of IP Group Hardwicke Building • New Square • Lincoln’s Inn London • WC2A 3SB • United Kingdom Conclusion: Infringement under the 2 Acts as they relate to services might be unlawful by reason of a breach of Part II, The First Protocol, Article 1 Articles 15(1) and 16(1) Directive 2006/123/EC And resolved by a defence to an infringement allegation in respect of infringement of an Olympic service mark and counterclaim for abuse of dominant position and infringement of human rights