Ambushing a Lion – is it a good idea?

The British & Irish Lions have arrived in South Africa! However, they touched down amid the country’s third, and seemingly worst, wave of Covid-19 infections. The Lions will face the Springboks in three rugby tests from 24 July and although South African Rugby President Mark Alexander has announced that he is confident that the scheduled games will go ahead, it seems unlikely that any spectators will be allowed.

Some may be surprised to learn, therefore, that the organisers of the 2021 British and Irish Lions Rugby Tour are moving forward with yet further steps to prevent possible acts of ambush marketing in connection with the tour. No spectators means no girls in orange skirts sneaking into the stadium to advertise beer for a competitor of one of the sponsors, right? True, but there is more to the story than that.

Although some of the more widely publicised examples of ambush marketing have involved spectators entering a stadium surreptitiously wearing branded clothing and revealing it just as the camera pans across the crowd, there are many more possible forms that ambush marketing can take. These include selling products or merchandise bearing marks and logos belonging to the event (these also often qualify as counterfeit goods), using the event name and logos in advertising, running competitions referencing the event and even endorsing certain players in a way that gives the impression of an association with the event in which they are participating.

So what is ambush marketing exactly? Any attempt by a trader to connect itself with a sponsored event, including a sporting event such as the CASTLE LAGER LIONS SERIES (sponsored by Castle Lager, clearly), without paying sponsorship fees, may be considered ambush marketing. South Africa has legislation in place to protect sponsors’ rights and the need to protect those rights is of paramount importance.  Sponsors pay millions of Rands for the exclusive marketing rights afforded by their sponsorship deals, and this provides funding for the event.  It follows that a failure to protect these rights could jeopardise the event itself and other future events which bring revenue into South Africa.

When a trader or advertiser either directly or indirectly creates the impression that it is associated with an event, or is an official sponsor of the event, this is termed ambush marketing “by association”. This would obviously be a misrepresentation and would be unlawful anyway. However, when someone simply attempts to benefit from the publicity surrounding an event and to gain exposure for their own brand at the expense of the event, without necessarily giving the impression that they are a sponsor, this is termed ambush marketing “by intrusion”.  This form of ambush marketing is also catered for under South African law.

On 28 April 2021, the Minister of Trade & Industry advertised a notice designating the British and Irish Lions Tour as a “protected event” in terms of Section 15A of the Merchandise Marks Act (the “MMA”).  This special protection afforded to the event means that third parties are prohibited from using their own trade marks, without authority from the organiser of the event, in a manner calculated to achieve publicity for the trade mark in question and thereby to derive special promotional benefit from the event.  This includes any visual or audible use of their trade marks which in any way, whether directly or indirectly, is intended to be brought into association with or to allude to any event.  The broad wording of the section is intended to cast the net widely and so bring to book those parties who commit ambush marketing by intrusion, in addition to those committing ambush marketing by association.

Also on 28 April 2021, and in terms of a different section of the MMA, the Minister of Trade & Industry issued a notice prohibiting the use of a host of words, emblems and logos connected with the British and Irish Lions Tour event without the authority of SA Rugby.

Contravening either the “protected event” or “prohibited mark” provisions of the MMA is a criminal offence and not to be taken lightly.

In the Government Gazette of 23 June 2021, the Minister called for public comment on yet further marks which the tour organisers would like to have prohibited. Interested persons have until 6 July 2021 to submit comments. If the Minister approves the application, non-sponsors will not be able to use any of these marks, or similar marks, without the authority of SA Rugby.

A similar prohibition was granted to Fifa in preparation for the 2010 Fifa World Cup. At the time, there was furore over FIFA’s application in terms of the Merchandise Marks Act because protection was sought for terms such as “2010” and “SOUTH AFRICA 2010”. The protection ultimately granted was much narrower, however, and in line with what the British & Irish Lions tour organisers have now sought in relation to this event, mainly logos and emblems. The 2010 Fifa World Cup was also a protected event in South Africa.

It should be noted that simply avoiding use of the various prohibited marks may not be sufficient to keep one out of trouble. The wide wording of the provisions relating to a “protected event” means that businesses would do well to toe the line and obtain advice in respect of any marketing in which even an indirect reference to the tour is made. Because the answer to the question is clearly “No, it is not wise to ambush a lion”.

Kelly Thompson
Partner | Trade Mark Attorney
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