The Super Sports Year 2024 — On Your Marks, Get Set, “Ambush”!
1. What is “ambush” marketing?
The term “ambush marketing” originates from US law. According to the recent definition of the Higher Regional Court of Karlsruhe, it is the “planned effort of companies that have not entered into a legal, official sponsorship commitment with an event organizer to draw public attention to themselves through their own event-related communication measures and thus to benefit from the communication performance of the event (e.g. awareness or image)” (see Higher Regional Court of Karlsruhe, judgment of 23 March 2023, ref. 19 U 131/21 — City coat of arms).
“Ambushers” benefit from the enormous attraction of major events without making their own contribution - especially not a financial one - to the respective event. This is why they are regularly a thorn in the side of organizers and official sponsors alike. From their point of view, they jeopardize the exclusivity of the circle of sponsors and, as a result, contribute to the overall decline in the attractiveness of sponsorship - which is regularly one of the main sources of income for event organizers. “Ambush marketing” is therefore sometimes also referred to as “free-rider marketing”, “parasitical marketing” or “guerrilla marketing” (see Fezer MarkenR/Fezer, 5th ed. 2023, MarkenG, sec. 3 para. 159).
2. On the permissibility of “ambush” marketing
These terms should, of course, be treated with caution. This is because they insinuate that “ambush” marketing is illegal behavior per se. But that is by no means the case.
On the contrary, advertising in close proximity to a competitor is now generally permitted (see BeckoK/Menebröcker/Blank/Smielick, UWG, 23rd ed. 2024, sec. 4 para. 568) — in contrast to previous case-law, according to which such advertising measures were only permitted under special circumstances (see German Federal Court of Justice (FCJ), judgment of 27 February 1986, ref. I ZR 210/84 — leaflet advertising).
The ball is now in the other half of the field: “Ambush” marketing measures are permissible unless there exist specific circumstances rendering them unlawful. We will show you below what these indications may be:
3. Unfair competition law
Related advertising measures in the sense of “ambush” marketing can be unfair competition if they create the incorrect impression among the relevant public that the advertiser is itself an official sponsor of the event in question. According to Sec. 5 para. 1 UWG (German Act against Unfair Competition), such measures are likely to constitute misleading commercial practices (see Ohly/Sosnitza UWG, 8th ed. 2023, sec. 4 para. 4/66 with further references).
Of course, anyone wishing to assert claims still has to overcome the threshold of Sec. 8 para. 3 UWG. This is because only those who qualify here are also entitled to pursue their claim. For commercial undertakings — and these include sports associations, organizing committees and other sponsors — Sec. 8 para. 3 no. 1 UWG Might apply. Accordingly, they would have to demonstrate and, if necessary, prove their status as competitors as well as a certain minimum level of commercial activity (see also our Blog post of January 18, 2024). While it is obvious that sponsors who offer similar goods or services as the “ambusher” are competitors, the status of competitor for sports federations and organizing committees is more difficult to argue. There must be a correlation between the advantages of the “ambusher” through his advertising measure on the one hand and the disadvantages arising for the organization in question on the other, so that the advantage of the one is the flip side of the disadvantage of the other (see FCJ, judgment of 19 April 2018, ref. I ZR 154/16 — Ad blocker II). Depending on the case, this can be rather difficult to assess.
4. Trademark Law
In case the name of the event is protected by a registered trademark, its unauthorized use may of course constitute a trademark infringement pursuant to Sec. 14 para. 2 markEng (German Trademark Act). However, this case is rather unlikely.
This is because the usual designation of major sports, cultural or other events is generally not distinctive, neither for the event itself nor for the goods or services associated with it (see FCJ, order of 27 April 2006, ref. I E.G. 96/05 — FOOTBALL WORLD CUP 2006; FCJ, order of 27 April 2006, ref. I E.G. 97/05 — 2006 WORLD CUP). Of course, the same requirements for the eligibility of signs apply as for any other sign (see FCJ, order of 27 April 2006, ref. I E.G. 96/05 — FOOTBALL WORLD CUP 2006). Even if further distinctive elements are added to the non-distinctive name of the event and the sign thus becomes eligible for registration, its scope of protection is likely to be rather limited since it does not arise from the event name but the additional distinctive element.
The call in parts of the literature for the introduction of a so-called “event trademark” as an independent trademark category, ensuring a maximum economic exploitation of an event and providing organizers with an instrument against “ambush” marketing, has gone unheard and is probably also outdated in light of the above case-law of the FCJ (see also Beckok/Eichelberger MarkenR, 36th ed. 2024, sec. 8 MarkenG para. 266.1 p.).
However, event names might receive protection as titles of works pursuant to Sec. 5 para. 1 and 3 brands or as special designations of business operations pursuant to Sec. 5 para. 2, 1st sentence markEng.
The FCJ already recognized the eligibility for protection as a work title in 2009, however, without setting out the exact requirements for this protection (see FCJ, judgment of 12 November 2009, ref. I ZR 183/07 — World Cup brands). Other courts have specified these requirements to the extent that an event becomes a work eligible for title protection when it pursues an intrinsic thematic idea that characterizes it visually, organizationally and in terms of content and presents itself in this way to the relevant public (see Higher Regional Court of Düsseldorf, judgment of 29 July 2019, ref. 20 U 34/19 — Kiesgrube; Higher Regional Court of Frankfurt a.M., order of 8 July 2020, ref. 6 W 63/20 — Corporate lawyers).
However, protection as a work title only arises through actual use in the German course of trade (see FCJ, judgment of 14 May 2009, ref. I ZR 231/06 — AirDSL). There is no “protection in advance”, which is why the scope of protection conferred by work titles is limited to the extent that it does not offer protection at the stage of planning. Furthermore, protection as a work title also requires a certain degree of distinctiveness of the title, although the requirements for this distinctiveness are somewhat lower than for the distinctiveness of trademarks (see FCJ, order of 22 January 2009, ref. I E.G. 34/08 — My World).
Event names may also be protected as special designations of business operations if the event represents a sufficiently distinct and thus independently identifiable business activity (see Higher Regional Court of Frankfurt a.M., judgment of 3 February 2011, ref. 6 U 242/09 — Jim Clark Revival). The Hanseatic Higher Regional Court assumed that the organization of the 2006 FIFA World Cup was an organizationally distinct part of FIFA due to the existence of an independent organizing committee (see Higher Regional Court of Hamburg, order of 7 February 2005, ref. 3 W 14/05 — 2006 WORLD CUP). Yet, the designation must also overcome the threshold of minimum distinctiveness.
However, “ambushers” should exercise caution when it comes to using figurative signs such as logos of events. These can - and regularly do - enjoy trademark protection for a large number of goods and services, so that the use of these or similar signs will generally constitute a trademark infringement. Typically, “ambushers” avoid using such logos and rather use self-created, generic logos as eye-catchers, e.g. images of footballs in the context of a soccer.
5. copyright law
Copyright only plays a minor role in connection with “ambush” marketing. However, it is of course affected if works accessible to copyright are distributed or reproduced without authorization, such as sporting goods or merchandise. And copyright protection of icons and logos is also definitely an option.
6th Olympic Protection Act
There is a particularity concerning the Olympic Games. The Olympic Designations as well as the Olympic 5-ring emblem enjoy special legal protection in Germany under the Olympic Protection Act (OlympSchG). The FCJ has already rejected concerns that this act might be unconstitutional (see FCJ, judgment of 15 May 2014, ref. I ZR 131/13 — Olympic discount).
However, the protection provided by the OlympSchG Is rather limited. Since the public will usually be able to distinguish between the advertising of an actual sponsor and other advertising references to the Olympic Games, the required likelihood of confusion will mostly be missing (see FCJ, judgment of 7 March 2019, ref. I ZR 225/17 — Olympiareif). This is mainly due to the fact that official sponsors clearly emphasize their sponsorship (see FCJ, judgment of 15 May 2014, ref. I ZR 131/13 — Olympic discount), which in turn means that the public will regularly not assume sponsorship in the absence of such a reference (see Kloth, “Being there is everything?” in: GRUR-Prax 2019, 245, 246).
Against this background, the courts have rejected an infringement of the Olympic Protection Act in all of the following cases: in the case of an advertisement for sportswear using the slogan “Olympic race” meaning “ready for the Olympics” (see FCJ, judgment of 7 March 2019, ref. I ZR 225/17 — Olympiareif), in the case of an advertisement for barbecue patties arranged in the shape of the Olympic rings (see Higher Regional Court of Stuttgart, judgment of 8 February 2018, ref. 2 U 109/17 — Grilled patties) and in the case of an advertisement for a fitness center using the slogan “We bring Olympics to the club” meaning “We are bringing the Olympics to the club” (see Higher Regional Court of Frankfurt a.M., judgment of 1 November 2018, ref. 6 U 122/17 — Olympia Special).
7. Domiciliary rights
To a limited extent, “ambush” marketing can also be prevented by event organizers by exercising their domiciliary rights (see BeckoK/Menebröcker/Blank/Smielick UWG, 23rd ed. 2024, sec. 4 para. 568). However, this is limited to the location of the event in question and does not, of course, prevent third parties from carrying out marketing measures outside the premises covered by the domiciliary right.
8. Conclusion for your company
If you want to conduct advertising related to an event without being a sponsor of the event yourself, you should therefore not neglect the following points:
- Obtain detailed information on the legal situation. Verify whether your advertising could possibly infringe trademarks, work titles or special designations of business operations associated with the event.
- Ensure that your company is not perceived as an official sponsor of the event.
- If you have received a warning letter, examine it carefully and do not enter into any obligation to cease and desist without due consideration. Warning letters are often deficient, for example because the warning party lacks the necessary legitimacy or has failed to observe formalities.
If you are a sponsor or organizer of an event and want to protect yourself as far as possible against “ambushers,” don't forget:
- Verify the extent to which trademark protection is possible for the event or, if there might be protection as a work title or a special designation of a business operation.
- Check the extent to which the “ambusher” actually gives the impression of being a sponsor of the event. Always emphasize your company's own sponsorship position.
- Should you wish to issue a warning letter, make sure that it complies with the legal requirements. Otherwise, you may have to pay for a counter warning.
We are of course happy to assist you every step of the way. Please feel free to contact us at any time.
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