Law firm gives retailers five top tips to stay compliant on IP during London 2012

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Adams: creating an association with the Games poses greatest risk to retailers

Adams: creating an association with the Games poses greatest risk to retailers

Stuart Adams, partner and global head of enforcement at IP specialist law firm Rouse, advises retailers on the top five IP pitfalls they must avoid during London 2012

“Retailers should be only too well aware by now there are a large number of protected signs/symbols/words relating to the Olympics, including the Olympic Rings, the words Olympic and Olympiad and the London 2012 logo. Retailers are not allowed to use these in the course of trade. Nor are they allowed to do anything in the course of trade which would create an association with the Games, unless they have permission from LOCOG. Use of words like London and Twenty Twelve, depending on context, could easily create such an association.”

Top five IP pitfalls for retailers to avoid during London 2012

1. Stocking counterfeit merchandise

“Obviously retailers must avoid stocking counterfeit merchandise. The potential pitfall here is counterfeit means bearing any of the protected marks/symbols without licence. It is perfectly possible reputable manufacturers will inadvertently do this, such that stock provided by well known, reputable, manufacturers could infringe. There is already a lot of 2012 merchandise in stores and, inevitably, some will market merchandise without the requisite licence from LOCOG. The best thing retailers can do to protect themselves from having Trading Standards officers come in and clear their shelves is to seek written assurances from suppliers, whose merchandise bears any of the protected marks, they are duly licensed. Any lingering doubts should be settled by asking to see a copy of the licence from LOCOG.”

2. Sales promotions

“It will be very tempting for retailers to have sales promotions in the immediate lead up to the Games and during the Games- and for such promotions to be Olympic-themed. If such promotions lead to an association with the Games they will fall foul of the law. However, there is a lot of room here for debate. It will be perfectly possible for some clever sales promotions to allude to the Games but not in such a strong way as to be considered an association. Equally, however, it will be all too easy to fall the wrong side of the line, especially when no one knows exactly where the line is. Many small retailers will take risks, however, larger retailers, with much more at stake if they attract LOCOG’s attention, would be well advised to seek expert advice/approval.”

3. Creating an association

“It is with creating an association the greatest problems will arise and where, therefore, retailers need to be most careful. An association may be created not just by use of the various words listed in the legislation as a guide (Olympics, London, Twenty Twelve, 2012, London, Summer, Gold, Silver, Bronze, etc) but by other words and by imagery. A picture of a runner in full gear running across an image of a stadium (not even the Olympic Stadium) with an image of Tower Bridge also in view, could easily be deemed to create an association. It only takes LOCOG to believe there is such an association for a retailer to find itself on the receiving end of a lot of inconvenience and potential expense.”

4. Suppliers

“Retailers need to remember potential issues with sales promotions apply not just to what they themselves are doing but also what their suppliers may be doing, for example with point of sale or other in-store material promoting individual products. Retailers should not assume their suppliers have approval for their promotional material. If in doubt, retailers should ask their suppliers for confirmation their material is approved, either by LOCOG or by their own in-house legal/marketing team.”

5. Paralympics

“Retailers also need to be aware all of the above applies to the Paralympics as well. There is a separate Paralympic symbol, and a separate London 2012 Paralympic logo, (and of course the words Paralympic and Paralympian) which enjoy the same protection as the Olympic symbol/logo/word.”

The consequences of getting it wrong 

“LOCOG says it will take a robust approach. It is vital it acts swiftly against unauthorised use so as to protect the investments of those who have paid for licences and whose investments are paying for the Games. But just because a letter lands on the mat from LOCOG claiming a particular activity infringes their rights does not mean its assertions are correct. This is still unknown territory and there are grey areas, not least in assessing whether any given activity creates an association with the Games.

“Retailers should not panic if they are on the receiving end. Unless clearly in the wrong, they should respond quickly and in a co-operative manner saying they are immediately investigating and promising to revert with a substantive response within seven days. They should also consider seeking legal advice.”