Legislative Update: The Olympic and Paralympic Marks Act

Canada will be on the international stage as the 2010 Winter Olympics are being held in Vancouver, British Columbia in February.  As part of the federal government’s commitment to the International Olympic Committee during its bid to host the Olympics, Canada was required to ensure that there are appropriate legal measures in place to protect the Olympic (and Paralympic) brand in Canada.  My own personal commitment is limited to watching every single game of Canada’s men’s and women’s hockey team, regardless of my work schedule. The sacrifices I make for my country!

The Olympic and Paralympic Marks Act was introduced as an element of this commitment.  Generally speaking, the Act prohibits the adoption or use in connection with a business, as a trade-mark or otherwise, of an Olympic or Paralympic mark “or a mark that so nearly resembles an Olympic or Paralympic mark as to be likely to be mistaken for it”.  The Act also prohibits use in connection with a business of a translation, in any language, of an Olympic or Paralympic mark.  Prohibited marks include “Canadian Olympic Committee”, “Olympian”, and “Olympic Games”.  Also prohibited (until December 31, 2010) are “Canada 2010”, “Canada’s Games”, and “Vancouver 2010”.

The Act further prohibits promoting or directing public attention to one’s business, wares or services in a manner that misleads or is likely to mislead the public into believing that they are authorized or endorsed by an official Olympic body such as the Canadian Olympic Committee, or that a business association exists with said Olympic body.

In determining whether a party acts in such a misleading manner, the court must consider that party’s use of further expressions which are attached to the Act at Schedule 3.  These expressions include what would arguably be considered common or generic words, including “Games”, “2010”, “Winter”, “Gold”, “Silver, “Bronze” and “Vancouver”.   While these expressions are not strictly prohibited under the Act, if a number of these expressions are used in combination, or in con- junction with a prohibited mark such as “Canada’s Games”, the court must take this into consideration when assessing whether that party’s actions are misleading pursuant to the Act.

The Act has generated some controversy, with some suggesting that the Olympic bodies are claiming own- ership over words such as “Games”, “2010”, and “Winter”.  As mentioned, however, these Schedule 3 expressions are not prohibited by the Act, even when used in conjunction with other Olympic or Paralympic marks.   The Act only stipulates that the Court must consider use of such marks when assessing whether that party was acting in a misleading matter.

Businesses in Canada are clearly taking notice of the restrictions, and some are taking precautions not to run afoul of the Act.  A very creative marketing campaign was recently launched by Lululemon Athletica, a yoga-inspired athletic apparel company.   Lululemon launched a new line of clothing, just two months before the start of the Olympics, called: “Cool Sporting Event That Takes Place in British Columbia Between 2009 and 2011 Edition”.  Note that Lululemon did not make reference to any of the prohibited marks or even the Schedule 3 marks!   To date, it appears that the Olympic officials have not taken any legal action against Lululemon, so we might have to score one for the little guy here (while Lululemon is a successful international apparel company, I suppose they are still the “little guy” relative to the Olympics!).

This article was originally published in the March 2010 edition of the Perlaw Reporter.