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Registering trade marks for sports event terms can help organisers boost commercial rights value, says expert


Sponsors may be willing to pay more for the commercial rights to major sporting events that already hold trade marks offering protection against 'ambush marketers', an expert has said.

Sports law specialist James Earl of Pinsent Masons, the law firm behind Out-Law.com, said that rights holders would gain "material benefits" from offering sponsors guaranteed exclusive rights to exploit "keyword terms" related to sporting events.

Earl was commenting after it emerged that the England and Wales Cricket Board (ECB) has obtained trade mark rights to certain terms linked with this summer's forthcoming Ashes series, where England will play Australia. The ECB has sought to put in place a portfolio of protected terms around the series, to prevent non-sponsors from associating their brands with terms such as 'Ashes Cricket 2013' or 'Old Trafford Ashes', according to a report by Marketing Week

"Brands have been trade marking certain terms themselves in the past, but we’re putting in place a process for them to work with us ahead of the Ashes," said John Perera, the ECB’s commercial director, according to the report.

Earl said that the ECB would be able to offer enhanced warranties to sponsors around their ownership of intellectual property (IP) as a result of the move, and that the proposition would be attractive to sponsors.

"The ECB is defending clever. Its approach demonstrates how organised and sophisticated rights holders are becoming at protecting their IP and is another great example of the way commercial rights are being scrutinised," Earl said. "Rights holders are doing whatever they can to put them on the cleanest platform possible to sell and exploit."

With three Ashes series taking place over the next 18 months, Earl said that there was an increased risk of there being a "concerted ambush marketing campaign" around the matches.

"There have been a number of high profile ambush marketing stunts over the years where companies have exploited high-profile sporting events to raise awareness of their brands without having paid rights holders to do so," Earl said. "By obtaining registered trade marks to keyword terms, the ECB is giving itself the best possible toolkit to head off ambush marketers swiftly."

The Government previously established legislation to prohibit ambush marketing at the Olympics and Paralympics in London last year. The legislation banned acts that were "intended specifically to advertise" goods, services or a person providing goods or services "in an event zone during the relevant event period or periods".

Earl said that it was "not practical" for the Government to legislate against ambush marketing at every sporting event. The Olympics was "an exception, because banning ambush marketing was a specific condition attached to hosting the 2012 Games and it was also critical for the funding of the event that there were commercial partners on board who could substantially fund the costs of hosting", he added.

"It may not be possible to obtain registered trade marks for every term that could be associated with a particular sporting event, but registering what you can is a sound approach because it can give absolute guarantees to your partners over the rights that are protected," Earl said. "This establishes a strong bargaining position for rights holders when it comes to negotiating the terms on which to sell rights to partners. It also allows them to take swift enforcement action, which is important because inherent in ambush marketing activity is infringement of IP."

Intellectual property law specialist Iain Connor of Pinsent Masons said that the ECB will be able to obtain court injunctions preventing unfair exploitation of its trade marks. He said, though, that the existence of the rights would not restrict the use of the terms by media organisations in standard news reports.

"Any one can use terms such as ‘the Ashes’ to describe the cricket matches themselves provided that this is done with ‘due cause’ and ‘in accordance with honest commercial practices’," Connor said. "It will be up to the courts to determine whether anyone using the marks is doing so in a way to take unfair advantage of the commercial rights of the ECB and this is obviously what the cricket authorities are seeking to prevent."

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