Using the Olympics in mar­ket­ing can be legal­ly risky

Three years (rather than the usu­al four) hav­ing elapsed since the COVID-deferred 2021 Olympic Games in Tokyo, Olympic fever has again struck in Aus­tralia as our tal­ent­ed ath­letes com­pete in the 2024 Paris Games.

A major pub­lic mar­ket­ing cam­paign is out in force on Aus­tralian streets and screens. Run by the Aus­tralian Olympic Com­mit­tee (AOC), the #AllezAus cam­paign encour­ages Aussies to tune in and cheer on their com­pa­tri­ots despite the dis­tance (and painful time zone) between our con­ti­nent and the events in France.

With the inter­est of reg­u­lar Aus­tralians in the Olympic Games dialled up to 11 for the next three weeks, there is a major temp­ta­tion for busi­ness­es to pig­gy­back on the Olympic spir­it by incor­po­rat­ing phras­es relat­ing to the Olympics, or the famed Olympic Rings, into prod­ucts and prod­uct marketing.

How­ev­er, the temp­ta­tion to do so is fraught with dan­ger. The major prob­lem with tap­ping into Olympic hype is that the AOC has a monop­oly on the use of Olympic devices in Aus­tralia – includ­ing var­i­ous graph­ics, words and phras­es – and only the AOC can grant licences to third par­ties to make use of Olympic branding.

Where organ­i­sa­tions can­not obtain (or don’t want to obtain) appro­pri­ate licences or approvals, some organ­i­sa­tions may deploy a tac­tic of imply­ing an asso­ci­a­tion with pro­tect­ed brand­ing, like that of the Olympic Games, which is called ambush mar­ket­ing. Gen­er­al­ly, ambush mar­keters seek to ben­e­fit from the good­will asso­ci­at­ed with a well-known event with­out hav­ing to pay to use those rights.

This arti­cle con­sid­ers the legal frame­work sur­round­ing pro­tec­tion of the Olympic insignia and ambush mar­ket­ing in rela­tion to the Olympics, high­light­ing key author­i­ties for the pro­tec­tion of Olympic sym­bols and phras­es nationally.

The law pro­tect­ing Olympic insignia

Pro­tec­tion of Olympic sym­bols and phras­es in Aus­tralia is gov­erned by the Olympic Insignia Pro­tec­tion Act 1987 (OIP Act) and the asso­ci­at­ed Olympic Insignia Reg­u­la­tions 1993. The OIP Act pro­vides pro­tec­tion for the Olympic rings, mot­to, and relat­ed Olympic insignia, ensur­ing that only autho­rised enti­ties (being the AOC and its licensed users) can use these sym­bols in a com­mer­cial context.

The pur­pose of the OIP Act is to pre­serve the integri­ty of the Olympic sym­bols, and to sup­port the com­mer­cial val­ue of licens­ing and spon­sor­ship deals made by the AOC with com­pa­nies who invest sig­nif­i­cant­ly in offi­cial­ly sup­port­ing Aus­trali­a’s efforts at the Olympic Games.

The OIP Act pri­mar­i­ly gives the AOC own­er­ship in Aus­tralia of the copy­right in the Olympic Sym­bol (known as the Olympic rings). It gives the AOC rights over the Olympic Sym­bol, as well as rights over the use or ​“pro­tect­ed Olympic expres­sions” for com­mer­cial pur­pos­es. The pro­tect­ed Olympic expres­sions are:

• Olympic
• Olympics
• Olympic Games
• Olympiad
• Olympiads

Fur­ther, the AOC cur­rent­ly owns 52 reg­is­tered trade marks in var­i­ous class­es that extend its exclu­sive rights over the use of graph­ics and phras­es that are adja­cent to the Olympic Games, such as:

• AllezAus
• AUSOLYMPICTEAM
• Have a Go
• the Box­ing Kangaroo
• Team Aus­tralia

In effect, organ­i­sa­tions that do not have a cur­rent spon­sor­ship deal with the AOC run the risk of legal action if they utilise the Olympic Rings, pro­tect­ed Olympic expres­sions or the AOC’s trade marks for com­mer­cial pur­pos­es, such as in mar­ket­ing for prod­ucts designed to cap­ture Olympic hype.

What ref­er­ences to the Olympics are allowed for non-sponsors?

Very few. The OIP Act does carve out a lim­it­ed num­ber of excep­tions, but these main­ly apply to organ­i­sa­tions refer­ring to the Olympics for the pur­pos­es of, or in con­nec­tion to, crit­i­cism or review. This excep­tion allows media organ­i­sa­tions, jour­nal­ists, broad­cast­ers, YouTu­bers and the like to make ref­er­ence to pro­tect­ed Olympic expres­sions in the course of report­ing on the Olympic Games, or issues sur­round­ing the Olympics.

There are also excep­tions for ref­er­ences to the Olympics made by for­mer Olympians, or for­mer sup­port staff to Olympians (such as phys­io­ther­a­pists) – but only once the Games are over, and not in a way that implies a spon­sor­ship arrange­ment with the AOC.

What penal­ties can be faced for breach of the rules?

The Fed­er­al Court of Aus­tralia can grant a wide range of reme­dies for breach of the OIP Act. These include injunc­tions, cor­rec­tive adver­tise­ments, mon­e­tary dam­ages (to vary­ing degrees), or account of prof­its, where­in the organ­i­sa­tion that breached the rules and made a prof­it has to sur­ren­der that prof­it to the AOC.

There are also fur­ther penal­ties that may be applic­a­ble for trade mark infringe­ment under the Trade Marks Act 1995 or under the Aus­tralian Con­sumer Law (ACL) includ­ing for mis­lead­ing and decep­tive conduct.

The Courts have cast doubt on the water­tight nature of Olympic mar­ket­ing prohibitions

The deci­sion in Aus­tralian Olympic Com­mit­tee Inc v Tel­stra Cor­po­ra­tion Lim­it­ed [2016] FCA 857 con­sid­ered a num­ber of issues around use of the Olympic expres­sion and the con­cept of ambush mar­ket­ing in rela­tion to the Olympic Games.

In 2016, Tel­stra ran an adver­tis­ing cam­paign ahead of the Rio de Janeiro Olympic Games that includ­ed phras­es such as ​“The Olympics on [Chan­nel] 7” and var­i­ous oth­er uses of ​“Olympics”. The AOC per­ceived this to be ambush mar­ket­ing pro­hib­it­ed by the OIP Act. Chan­nel 7 had secured the rights to broad­cast the 2016 Olympic Games, and had licenced the broad­cast adver­tis­ing rights to Telstra.

The AOC pri­mar­i­ly argued that Tel­stra had breached the ACL’s pro­vi­sions relat­ing to mis­lead­ing and decep­tive con­duct in that an Aus­tralian con­sumer would believe Tel­stra was the offi­cial telecom­mu­ni­ca­tions part­ner for the Olympics (which was a licence owned by Tel­stra’s rival, Optus, in 2016, although Tel­stra had held the licence for pre­vi­ous Olympic Games).

The Fed­er­al Court of Aus­tralia, affirmed on appeal by the Full Court of the Fed­er­al Court, dis­agreed. The Full Court upheld the Fed­er­al Court’s judg­ment that Tel­stra’s adver­tis­ing cam­paign was not mis­lead­ing or decep­tive as the rea­son­able per­son would not recall Tel­stra’s for­mer spon­sor­ship of the AOC.

While Tel­stra had used pro­tect­ed Olympic expres­sions in its adver­tis­ing – which stat­ed that the 7 Net­work’s licenced Olympic Games broad­casts could be watched on the Tel­stra mobile phone data net­work – it was held that it was not straight­for­ward to show that this use was of a kind that con­tra­vened the OIP Act or the ACL. Instead, the use of the Olympic expres­sions was direct­ed at inform­ing cus­tomers of Tel­stra’s licence to broad­cast Chan­nel 7’s cov­er­age via its mobile phone application.

Need advice about intel­lec­tu­al prop­er­ty risks of prod­ucts and prod­uct marketing?

The effect of the Tel­stra case is that the bound­aries of what does or does not con­sti­tute a breach of the pro­tec­tions around com­mer­cial use of Olympic expres­sions has been blurred. How­ev­er, it also shows that the AOC takes breach­es seri­ous­ly so we would not rec­om­mend that you pro­ceed heed­less­ly. Instead, by respect­ing the pro­tec­tions asso­ci­at­ed with the Olympic insignia, phras­es and expres­sions, you will ensure that their val­ue for AOC’s licens­ing remains high – some­thing that ben­e­fits our tal­ent­ed ath­letes and hope­ful­ly our posi­tion in the medal tally!

Aus­tralian intel­lec­tu­al prop­er­ty law is com­plex, and infring­ing the IP rights of oth­er busi­ness­es (even inad­ver­tent­ly) can pose risks to your organ­i­sa­tion. We can help by con­sid­er­ing your planned prod­uct and mar­ket­ing con­cepts, and advis­ing you of the degree of risk asso­ci­at­ed with these plans. Get in touch with Swaab’s expe­ri­enced intel­lec­tu­al prop­er­ty team at jas@​swaab.​com.​au