1. 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

2. 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

3. 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

4. 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

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

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

7. 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

8. 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

9. 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

10. 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

11. 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

12. 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

13. 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

14. 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

15. 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

16. 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

17. 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

18. 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

19. 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

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