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ambush marketing: FIFA sees orange over World Cup

18 June 2010

The papers have been filled over the last couple of days with reports of the orange mini-dress-sporting football fans who were thrown out of the Holland v Denmark World Cup game earlier this week.

Whilst the majority of the media appear to have picked up the story more as an excuse to show images of the fans themselves than out of any great concern for the legal issues involved, for trade mark lawyers it does raise some interesting issues.

Ambush marketing is an ever present feature of any major sporting event, and its certainly got FIFA cross on this occasion. So what exactly does ambush marketing mean? Well, essentially it is marketing that takes place at or around an event (Usually a sports event) in which the marketer does not pay a fee to the organisers of the event, but instead tries to find some unofficial way of getting its brand out there during the course of the event. The issue has arisen at pretty much every major sporting event in recent years, perhaps notably the first time in 1992 when Nike sponsored the US basketball team, despite Reebok being the official sponsor of the Barcelona Olympics.

Over the years, countries hosting major sporting events have attempted to find more and more draconian ways of preventing ambush marketing (indeed they have been expected to do so by the international organisations that allocate the hosting of such events). The UK Government, for example, passed the London Olympic Games and Paralympic Games Act 2006 shortly after learning that London had been chosen to host the Olympics in 2012. Schedule 4 of the Act creates a "London Olympics Association Right" and provides that a person infringes the London Olympics Association Right if, in the course of trade, he uses in relation to goods or services any representation (of any kind) in a manner likely to suggest to the public that there is an association between the London Olympics and either the goods or services, or a person who provides the goods or services. That is, by any lawyers definition, pretty wide. The Act also helpfully provides a (non-exhaustive) list of words that will be considered to be an infringement when used in combination, such as "2012" and "summer", or "games" and "sponsor".

If that sounds fairly heavy handed, the approach of FIFA and the South African authorities appears to be even more so. The women ejected from the stadium during the Holland v Denmark game are accused of contravening the Merchandise Marks Act 17 of 1941, which was amended by the Merchandise Marks Amendment Act 61 of 2002 to include a new s.15A entitled Abuse of trade mark in relation to event. This section provides that "for the period during which an event is protected, no person may use a trade mark in relation to such event in a manner which is calculated to achieve publicity for that trade mark and thereby to derive special promotional benefit from the event, without the prior authority of the organiser of such event". A trade mark is deemed to include any visual representation of the trade mark upon or in relation to goods or in relation to the rendering of services; any audible reproduction of the trade mark in relation to goods or the rendering of services; or the use of the trade mark in promotional activities.

Contravention of this section is a criminal offence.

The difficulty in this case is that it is hard to see how the women, or the beer company itself, can be accused of using a trade mark. The women were essentially just wearing orange dresses. No logo or mark of the company is visible on the dresses and therefore it is hard to see exactly what trade mark has been used.

Of course, there is no doubt that this was ambush marketing. Bavaria launched a TV commercial in the Netherlands prior to the World Cup featuring orange-clad football supporters and released the "DutchDress" - the orange minidress given to the women - as merchandise. As such, the legal argument is presumably that the dress itself has become synonymous with the company and has become a badge of origin and therefore a trade mark. The section is not limited to registered trade marks, nor does it define a trade mark with much precision, so the argument is not totally implausible. However, it does surely venture into the absurd when the net result is that a member of the crowd can be prevented from wearing a plain orange dress at a Dutch international football match!

One also wonders just where the argument ends. Any football fan who has been to an England World Cup match will know that the ground is invariably covered, not only with England flags, but various flags and banners for the fans own English football clubs. Since these clubs are commercial entities with their own registered and unregistered trade marks, surely this activity contravenes the legislation? What if, for example, someone turned up to a world cup match in their club shirt? Arguably, this also falls within the legislation. When fans wear their own club football shirts (bought either directly from their club or from a retail store licensed to sell the goods) their aim is to publicise their support for the club. Thus, by doing so they are behaving in a way calculated to "achieve publicity for that trade mark". A ridiculous argument perhaps, but is it any more ridiculous than banning Dutch football fans from wearing plain orange clothes, even if they are supplied to them by a beer company?

The incident has caused much amusement - although perhaps not so much for the two women who have now appeared in Johannesburg Magistrates Court charged with an offence under the Act and released on £1,000 bail to appear back in court later this month, or indeed sacked ITV pundit Robbie Earle who it is alleged passed tickets to the women prior to the game. It has also given Bavaria massive worldwide publicity, more through the reaction of FIFA and the subsequent media storm than through the stunt itself, much as in 2006 when Bavaria tried a similar trick by giving Dutch fans orange lederhosen to wear in the ground (they ended up having to watch the game in their underwear).

However, the affair does raise two important points. Firstly, it demonstrates that organisations like FIFA, and the host countries of major sporting events, will - indeed they would argue must - take ambush marketing extremely seriously and will crack down hard where they see examples of it. We can expect the same response in England during the 2012 Olympics, and indeed the 2018 World Cup if it comes to England.

Secondly, it arguably illustrates that, no matter how draconian the legislation or the enforcement of it, ambush marketers will always be one step ahead. Whatever the merits in any argument that these women and/or the beer company have contravened relevant legislation (and they seem fairly weak), it is surely unlikely that the women charged with offences will be found guilty and/or will receive serious punishment. Meanwhile, Bavaria has achieved exactly what it set out to achieve, no doubt in part because it correctly predicted the reaction of the authorities!

One thing we can therefore be sure of is that during the 2012 London Olympics and in the extensive lead up to them, the same or even cleverer tricks will be tried again by ambush marketers ready to find new ways to get their brand out there without paying hefty sponsorship fees. This will be a fascinating battle for trade mark lawyers and others to observe, and indeed most trade mark lawyers who examine the legislation will easily spot ways of circumventing it. The fact is that the stakes are extremely high, and the sums of money to be made and lost for both the authorities and the commercial entities involved are very significant. Indeed, it could be said that the success of the 2012 Olympics in many ways depends on the ability of the UK Government and the London Organising Committee of the Olympic Games to strike the right balance between protecting the commercial interest of their sponsors whilst being seen not to be too heavy handed with fans or indeed UK companies trying to exploit the commercial potential of the event.

No doubt there are numerous brands already planning their ambush marketing strategies. So, let the games begin!

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The content on this page is provided for the purposes of general interest and information. It contains only brief summaries of aspects of the subject matter and does not provide comprehensive statements of the law. It does not constitute legal advice and does not provide a substitute for it.

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