October 21, 2019

Seeing red over the All Blacks

This article first appeared in NZ Herald

Businesses warned they could be ‘sin-binned’ for unauthorised association with big name brands.

Businesses wanting to promote their services and products by hitching their wagon to popular brands such as the All Blacks and the Rugby World Cup, risk – like many of the players – being red or yellow carded.

Tonia Brugh, a senior associate at intellectual property law firm James & Wells, says it is only natural that business owners will want to associate with popular events and personalities, but using logos, brands, slogans and other intellectual property (IP) without permission can have serious legal implications.

“If you are selling a product that gives the impression that you are associated with another entity – for example selling a rugby jersey with an All Blacks logo on it – this may amount to an infringement of trade mark rights or a breach of the Fair Trading Act,” she says.

“Big brands like the All Blacks rely on their name, IP and reputation so these are carefully guarded and protected. Every day IP owners are scouring the web and social media looking for infringers of their copyright, IP and trade marks – so be vigilant.”

Brugh says cases like this can lead to anything from a cease and desist letter, to a demand that unauthorised logos are removed from advertising and counterfeit goods are destroyed. Significant costs and damages can be incurred and the whole issue could end up in court – all part of an ongoing battle for companies and corporates to retain control of their brand and prevent it being exploited or tainted.

James & Wells specialises in IP, patents and trademarks. When they are not advising clients on how to register and protect their IP, they help them seek remedies for unauthorised use.

In broad terms one can’t use another entity’s name, slogan, logo or IP without their permission. Still, says Brugh, a mixture of dodgy-dealers and opportunists regularly chance their arm only to be blindsided by a red card from a firm such as James & Wells.

Brugh says those wanting to use another’s name to boost their business, or sell products featuring another company’s logo, need to understand the legal restrictions of trade marks, copyright, passing off and the Fair Trading Act.

“Some businesses have been known to place a logo – such as the All Blacks’ silver fern – in their advertisements or their website causing people to instantly assume there is an association with the World Cup. It happens a lot and the business may be in breach of the All Black’s IP rights, unless permission has been given.

“Traders might say they didn’t know, but it would be foolish to take on a big brand. Others will knowingly place popular logos on clothing and sell it as official merchandise,” Brugh says. “In one recent case a retailer had to destroy boxes of counterfeit handbags featuring the Louis Vuitton logo.”

In another copyright case a man in the UK was given an £85,000 (NZ$168,000) bill from Sky TV for broadcasting a pay-to-view boxing match on his Facebook Live page to 4000 people. The man’s defence of “not doing it to make money” didn’t wash. He settled by paying Sky $10,000.

“Spark Sport has the rights to broadcast the World Cup in New Zealand,” says Brugh. “That means no one else can use match footage or stills from the footage without permission.
“It may seem harmless to stream World Cup matches and sell tickets to other spectators – but that could amount to a breach of copyright,” she says. “Spark Sport will have paid a lot of money to broadcast those games and businesses that screen them to paying customers need to hold a commercial license.”

So, if you are a company that’s a big fan of the Rugby World Cup and want to feature it in your marketing what can you do?

“Advertising using a rugby theme will need to be generic so as not to give the look of sponsorship,” says Brugh. “There’s a fine line between advertising with a theme and ambush marketing, where you’re cashing in on an event without the event organiser’s permission.”

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