Olympics 2021: Could more brands follow in Puma’s footsteps?
Mark Caddle, partner at Withers & Rogers, writes about what the postponement of the Tokyo 2020 Olympics means for brands who are seeking new trade marks.
Following the announcement that the forthcoming Olympic games would be postponed until next year, the International Olympics Committee (IOC) was quick to confirm that it would continue to use the name ‘Tokyo Olympics 2020’. However, this could attract opportunistic brand owners to register trade marks using next year’s date instead. Has the IOC made the right move or could it result in more legal disputes?
Keeping the ‘Tokyo Olympics 2020’ name could seem a questionable decision for a number of reasons. Firstly, the branding will not match the year that the event takes place. Secondly, unassociated brands may now have an opportunity to capitalise on the unused 2021 title, diluting the commercial value of existing trade marks as a result.
The IOC has already secured numerous big-name sponsors for the games, many of whom have already invested in branded merchandise and marketing campaigns bearing the 2020 name. Forcing sponsors to rebrand their activities would incur considerable cost.
From an intellectual property perspective, some of the trade mark registrations for the 2020 Olympics were first filed in 2012, and the name of the event has been widely used internationally since then. If the IOC had decided to change it, it would have had to go through the whole process of seeking new trade mark registrations, costing significant time and money.
Although these reasons make commercial sense, opportunistic trade mark filings by brands with no ties to the event are more likely as a result. For example, Puma was quick off the mark, applying to the United States Patent and Trademark Office (USPTO) and European Union Intellectual Property Office (EUIPO) for ‘Puma Tokyo 2021’ on the 24 March – the same day that the postponement was announced. On 31 March, Puma also applied to register ‘Puma Tokyo 2022’ in the US.
As Puma is not an official sponsor of the Olympics, it seems likely that this decision was an attempt to link its brand identity to the hype surrounding the event. By seizing this opportunity to promote its brand and obtain trade mark protection, it appears Puma may be seeking to be able to sell ‘Tokyo 2021/2022' branded items throughout the US and EU, without risk of attracting an infringement action.
On 24 April, the USPTO ruled that Puma’s applications were too similar to the Tokyo 2020 name, and it decided that the trade marks would not be registered. Following this rejection, Puma now has a six-month window to respond. It is often difficult to get around a similarity rejection. One tactic to do so is to obtain the original trade mark owner’s consent, which would be unlikely to be granted in this case. Puma's EU trade mark application will not be blocked by the EUIPO in this way. It will be for the IOC to oppose the application and the deadline for doing so is 16 July 2020. As yet, no such challenge has been made by the IOC.
To block more opportunistic filing activity, the IOC may have to consider extending its trade mark protection to include marks bearing the 2021 date too. On 23 March, importantly before Puma's US and EU applications, the IOC filed for a 'Tokyo 2021' trade mark in Liechtenstein, as disclosed on the EUIPO trade mark database. If granted, the IOC's registrations could give the organisation protection for marks bearing next year’s date across the EU.
The process of securing trade mark registrations can take more time in some countries than others. In Europe the system is more passive, so the IOC will need to step in and challenge filings when needed. On the other hand, the USPTO will uphold the rights of the original trade mark owner, as shown by its handling of the Puma application.
In what has become a fast-moving and changeable situation, the IOC recently announced that the games could be cancelled altogether if they don’t go-ahead next year. Although this will not affect any pending trade mark registrations – other than making them less relevant – brands that might be considering applying for 2021 registrations could be more hesitant to do so. While this could be positive for the IOC, cancelling the event could lead to further opportunistic filings once a new date is confirmed. Therefore, it is vital the IOC considers its IP strategy carefully, before announcing a new date.
When it comes to protecting a brand name or logo, it is always best to take early action. Doing so can help to prevent others from eroding your market share by coming up with something that is too similar or otherwise trying to profit from your marketing campaigns and initiatives. As the situation between the IOC and Puma has shown, if brands don’t act early, they may have to tackle unwanted disputes.
Photo Credit : Tokyo 2020