Tempting to trade mark the Olympics: Beware of reputation

Tyrone Berger reports on attempts to register the mark "Pierre de Coubertin" (think Olympic Games).

With several attempts to trade mark the name of the founder of the modern Olympic Games, Pierre de Coubertin, Dutch-based Tempting Brands is on track to clash with the International Olympic Committee (IOC).

Going for Gold!

In April every year, the World Intellectual Property Organization (WIPO) and the IP community celebrate ‘World Intellectual Property Day. This year’s theme was ‘Reach for Gold: IP and Sports’. The Director-General of WIPO, Dr Francis Gurry, emphasised that “Intellectual property rights underlie and empower the financial model of all sporting events worldwide.” As any observant Kat will know there is no better example of this than the Olympic Games.

The Olympic Games remains one of the most well-known sporting events in the world, which alternate every two years with the Summer games set for Tokyo in 2020 and the Winter games in Beijing in 2022. In order to protect its brand and reputation, the IOC relies on the Nairobi Treaty, as well as national legislation (in Australia: Olympic Insignia Protection Act 1987), to protect its Olympic marks and insignia.

Furthermore, in the Olympic Charter, it specifies that:

The IOC may take all appropriate steps to obtain the legal protection for itself, on both a national and international basis, of the rights over the Olympic Games and over any Olympic property.

Olympic properties or symbols will generally include the Olympic ‘rings’, flags, its motto (‘Faster, Higher, Stronger’), anthems, and expressions such as ‘Games of the Olympiad’. Terms to be protected at Tokyo 2020 include:

Games of the XXXII Olympiad

Tokyo 2020 Paralympic Games

Tokyo 2020 Olympic Games

Tokyo 2020 Olympic and Paralympic Games

Tokyo 2020 Games

Tokyo 2020

A tale of two trade marks

In Tempting Brands Netherlands BV v Comite International Olympique (28 February 2019), the Intellectual Property Office of New Zealand (IPONZ) dismissed the IOC’s opposition to registration of the trade mark PIERRE DE COUBERTIN. Tempting Brands, a Dutch company (with the motto: ‘Turning trademarks into brands’), sought to register PIERRE DE COUBERTIN for clothing and assorted goods in several countries, including New Zealand (NZ) and Australia. The IOC opposed both registrations.

In the New Zealand case, the IOC failed to establish there was sufficient awareness of Pierre de Coubertin; in particular, the evidence of Pierre de Coubertin as a historical figure associated with the Olympic Games did not constitute use of the name as a trade mark.

A statutory declaration on behalf of the IOC, stated:

Given New Zealand’s involvement in the Olympic Movement for close to a century, the global nature of the Games, and the fact that New Zealand has such a strong sporting culture, it is likely that New Zealanders will be aware of Pierre de Coubertin and his inherent connection to the Olympics and the IOC.

However, with regard to the IOC’s evidence of its use of ‘Pierre de Coubertin’ online, the evidence did not refer to the IOC nor was any evidence presented regarding the extent to which New Zealanders had read any of the articles that mention Pierre de Coubertin as an historical figure associated with the Olympic Games. The Hearing Officer concluded,

I am not satisfied that the evidence adduced by the opponent establishes that there was a sufficient awareness in the New Zealand market of the IOC’s PIERRE DE COUBERTIN trade mark at the relevant date to meet the threshold requirement of reputation.

On 25 March 2019, the Australian Trade Marks Office (ATMO) handed down a decision in Comite International Olympique v Tempting Brands Netherlands BV. Here, the IOC successfully established that there is a connotation with the name Pierre de Coubertin and the Olympics, and therefore, use of the mark PIERRE DE COUBERTIN would be likely to deceive or cause confusion under the Trade Marks Act 1995. The Hearing Officer accepted submissions that Australians are aware of Pierre de Coubertin because he is honoured publicly, including at the two Olympic Games in Australia (Melbourne 1956, Sydney 2000), and concluded that –

there is a no doubt in my mind that there is a real tangible danger of deception or confusion arising out of the use of [Tempting Brand’s mark] in connection with [its] Goods.

On this occasion, the IOC filed evidence about the annual Pierre de Coubertin Award created by the Australian Olympic Committee (AOC) in 1992, with a total of 15,862 recipients of the awards throughout Australia by 2016.

In the Hearing Officer’s closing assessment –

Of particular relevance in this decision is the unusual nature of the name, Pierre de Coubertin, especially when used in Australia. If the modern Olympic Movement were begun by a person with what, in Australian terms, was a fairly nondescript, common name, such as John Smith, this ground of opposition might not have succeeded.

Tempting Brands has recently filed an appeal in Australia against the ATMO decision.

Picture by Roland Zumbühl and is licensed under the Creative Commons Attribution-Share Alike 3.0 Unported license.