On-Line use of Olympic Imagery Off-limits

03 November 2001

Rob Deans

Earlier this week a new law was passed by Beijing's mayor and adopted by the local government in Beijing which restricts the use of Olympic trade marks and other Olympic intellectual property such as songs, slogans and mascots.

In July, Beijing was awarded the right to host the Olympic Games in 2008. As a host city, Beijing has adopted legislation similar to that seen in Australia and Greece (for Sydney 2000 and Athens 2004) to protect the Olympic marks. The Olympic Movement has a range of extremely valuable intellectual properties, ranging from the Olympic Rings, the terms 'Olympics' and 'Olympiad' and the title and logo for each Olympic Games (the logo for the Beijing Games has not yet been designed, although the Bid Committee's logo is already very well known in both China and Hong Kong).

To some extent, these words and symbols already enjoy protection either because they have been registered as trade marks or because they are protected as a result of the goodwill which the International Olympic Committee (IOC) has developed in them. Although the law differs between Hong Kong and China, any company which uses Olympic imagery in the course of its business in such a way as to imply either that it is a sponsor of or an official supplier to the Olympics or that it has been authorised by the IOC or the Chinese Olympic Committee (COC) to use such imagery will risk action being taken against it for trade mark infringement or, depending on whether the company is in Hong Kong or China, for passing off or unfair competition.

There are, however, limitations to these existing laws. For example, earlier this year, the famous English Premier League football club, Arsenal, took action against a trader who was selling unauthorised Arsenal football shirts just outside the Arsenal ground at Highbury for trade mark infringement (based on Arsenal's registrations including for the club's "Gunner" badge) and for passing off. Both these claims failed, with the judge, Mr Justice Laddie, ruling that:

1. the defendant had not used the "Gunner" badge strictly as a trade mark (ie as an indicator of the source of the football shirts). Instead, the judge considered that this was merely a badge of allegiance for supporters, not a symbol indicating that the shirts had been manufactured either by Arsenal Football Club or to its order.

2. there was no evidence to suggest that supporters were confused into believing that the defendant was an authorised supplier of Arsenal football shirts.

The decision in this case is highly controversial and the trade mark issues have been referred to the European Court of Justice for clarification. However, it does demonstrate some of the potential difficulties which the IOC and the COC would face without legislation in place. The new legislation in Beijing removes the uncertainties under the existing law and it puts the IOC, the COC and, when it is formed (probably at the end of this year), the Beijing Olympic Games Organising Committee (BOGOC) in a much stronger position to take action against unauthorised users of Olympic imagery in the years running up to the Beijing Games.

Specifically, website operators should note that this new legislation expressly applies to the use of Olympic imagery over the Internet and, accordingly, the operators of websites either hosted locally in Beijing or directed at an audience in China would be well advised to avoid using any Olympic imagery on their sites. Failure to heed this warning could well result in civil or criminal action being taken against the operator if it is based in Beijing or, if it is based elsewhere, its website being blocked. Any operator based outside Beijing (either elsewhere in China or overseas) may well also face legal action under the local laws where it is based (other cities and provinces in China are expected to enact legislation following Beijing's lead).

The decision to introduce this legislation at such an early stage (7 years before the Beijing Games are to be held) is an indication of the importance of this issue to the authorities in Beijing and it recognises the importance of being able to prevent the unauthorised use of Olympic imagery in attracting sponsors for the Games.

Education will be required in coming years so that businesses are well aware of the consequences of using Olympic imagery without first having obtained clearance from the IOC, COC or BOGOC. However, the introduction of legislation in Beijing now puts everyone on notice of the authorities' intentions to protect Olympic imagery and the potential consequences for unauthorised users. You have been warned!

First published in the South China Morning Post Newspaper, 03/11/2001