Workshop on « Economic Analysis of Trade Marks and Brands » 5th and 6th June 2008 at OHIM in Alicante Trade Mark Protection for Events attractive images and the economic role of Trade Mark Law Monday, 14 January 2019

Introduction (1) Sponsorship importance of sponsoring for major events 90% of sponsorship goes into sports 26 billion US-dollar overall sponsoring objectives followed by sponsors: marketing objectives corporate objectives institutional objectives Trade Mark Protection for Events Monday, 14 January 2019Monday, 14 January 2019

Introduction (2) event organizers seek exclusivity for their sponsors  the sole right to merchandise specific items under the “official” logo prime importance of Trade Mark Law organizers want to see the name of the tournament or championship itself protected Trade Mark Protection for Events Monday, 14 January 2019Monday, 14 January 2019

Introduction (3) Ambush-Marketing preliminary definition: not a legal category nor a clearly defined marketing practice most definitions lack objectivity preliminary definition: “Ambush-Marketing is an association with an event and the values it incorporates, without authorization from the organizer.” Trade Mark Protection for Events Monday, 14 January 2019Monday, 14 January 2019

EURO 2008 (1) official logo: word marks: EURO 2008 (CT 003410529) EM 2008 (CT 004905411) Austria/Switzerland 2008 UEFA EM 2008 UEFA European Football Championship Trade Mark Protection for Events Monday, 14 January 2019Monday, 14 January 2019

EURO 2008 (2) examples of unauthorized marketing: Trade Mark Protection for Events Monday, 14 January 2019Monday, 14 January 2019

Event Trade Mark Cases: “WM 2006” (1) German Federal Court: trade marks “FUSSBALL WM 2006” cancelled “WM 2006” partially cancelled consumers would understand the signs as descriptive for the 2006 World Cup FIFA could not be held responsible for the goods produced under the marks Trade Mark Protection for Events Monday, 14 January 2019Monday, 14 January 2019

Event Trade Mark Cases: „WM 2006“ (2) Cancellation Division of OHIM upheld registrations of „WM 2006“, „World Cup Germany“, „World Cup 2006“, „Germany 2006: marks were not descriptive but only suggestive of something happening in Germany not devoid of distinctive character Trade Mark Protection for Events Monday, 14 January 2019Monday, 14 January 2019

Absolute Grounds for refusal or invalidity Art. 7 (1) CTMR (corresponds to Art. 3 (1) TMD) The following shall not be registered: (a) signs which do not conform to the requirements of Article 4; (b) trade marks which are devoid of any distinctive character; (c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service; Trade Mark Protection for Events Monday, 14 January 2019Monday, 14 January 2019

The Essential Function and Economic Role (1) traditionally a trade mark indicates the origin of the goods and services Essential function (ECJ): to guarantee the identity of the origin of the marked product this does not mean to indicate the physical source but the economic parentage Trade Mark Protection for Events Monday, 14 January 2019Monday, 14 January 2019

The Essential Function and Economic Role (2) the trade mark must offer a guarantee that all the goods or services bearing it have originated under the control of a single undertaking which is responsible for their quality (ECJ, case C-39/97) Trade Mark Protection for Events Monday, 14 January 2019Monday, 14 January 2019

The Essential Function and Economic Role (3) Advertising function trade marks as an attractive force: Frank Schechter (1927): “The mark actually sells the goods.” Naomi Klein (2000): “What was changing was the idea of what – in both advertising and branding – was being sold.” Trade Mark Protection for Events Monday, 14 January 2019Monday, 14 January 2019

Merchandising Function Arsenal vs Reed, (ECJ, case C-206/01) non-authorized use of the sign “Arsenal” on scarves Court held: the use is such to create the impression that there is a material link in the course of trade between the goods concerned and the trade mark proprietor Trade Mark Protection for Events Monday, 14 January 2019Monday, 14 January 2019

Reduction of Search Costs economic analysis of trade mark law: trade marks convey information reduction of search costs for the consumer sales prices reflect differences in search costs the trade mark reflects the economic role of goodwill Trade Mark Protection for Events Monday, 14 January 2019Monday, 14 January 2019

Emotional Benefits of Trade Marks (1) deficiencies of the search cost-model: cannot explain the role of trade marks in merchandising and sponsoring good reputation: acts as foundation for an attractive image but: an attractive image can also be developed by the use of attractive themes and imagery Trade Mark Protection for Events Monday, 14 January 2019Monday, 14 January 2019

Emotional Benefits of Trade Marks (2) designation of an event applied on a product ceases to be a mere source of information instead: gives the consumer access to psychological benefits provided by an attractive image Trade Mark Protection for Events Monday, 14 January 2019Monday, 14 January 2019

Emotional Benefits of Trade Marks (3) Merchandising major events merchandising product is not bought for functional benefits but for the emotional and self-expressive benefits it delivers Appeal of an event name supports charging premium sales prices might not reflect any investment in building up the trade mark Trade Mark Protection for Events Monday, 14 January 2019Monday, 14 January 2019

Competitive Interests in Merchandising Implications of emotional and self-expressive benefits for trade mark law? Expansion of exclusive rights for event organizers? Does this kind of appeal warrant the same level of protection as a reputation based on use as a trade mark? Trade Mark Protection for Events Monday, 14 January 2019Monday, 14 January 2019

The Economic Rationale Who created the reputation of major events? Trade mark law used to target free-riding only if it misleads consumers Does the financial support of merchandising for event organizers justify an extension of protection? What would be the economic costs? Trade Mark Protection for Events Monday, 14 January 2019Monday, 14 January 2019

Thank you! Trade Mark Protection for Events Monday, 14 January 2019Monday, 14 January 2019