• IN THE UK OFFICE

    Olympic Torched

    A UK company, Olympic Oils Limited, had been selling oils and fats under the trade mark Olympic since 1990. In April 1998, they therefore filed a UK trade mark application for a series of two marks, the word Olympic and a combination of Olympic plus a torch for inter alia "oils and fats" in Class 29.

    Unfortunately for the applicant, in September 1995, the Olympic Symbol, etc (Prevention) Act 1995 had come into force. This Act amended Section 4 of the Trade Marks Act 1994, the Section dealing with specially protected emblems, by introducing a sub-clause (5) dealing with the protection of the word Olympic and closely related words, such as Olympiad and Olympian, and symbols, such as the five Olympic rings. Under the newly introduced Section 4(5), the word Olympic (and closely related words and symbols) cannot be registered as a trade mark unless the application is made by the proprietor of the Olympic Association Right or with their consent. In the UK, it appears that the proprietor of the Olympic Association Right is the British Olympic Association.

    These provisions applied to UK trade mark applications filed on or after 21 September 1995, the date the Olympic Symbol Act came into force.

    Since Olympic Oils were unable to provide evidence of the consent necessary to overcome the objection raised by the Office, their trade mark application was duly refused.

     

    Comment

    There are over sixty UK trade mark registrations consisting of or containing the word Olympic or other protected words such as Olympian. These were filed before the Olympic Symbol Act came into force, however. In the trade mark world, as everywhere else, timing is everything. In the case discussed above, the applicant left it too late to file their UK trade mark application for Olympic.

    Given the situation before the UK national office, would a CTM application fare any better? At first sight, the answer is yes. A number of CTM applications have been accepted for marks containing the words Olympic or Olympian. None of these accepted applications appear to have been filed with the consent of the International Olympic Committee (IOC) or any of their national equivalents.

    A recent CTM opposition case (81/2000) suggests that the unauthorised protection of Olympic etc. following the OHIM route will also prove to be difficult, however. In that case a CTM application for a label bearing the words Family Club Belmont Olympic covering goods and services in Classes 16, 36 and 39 was opposed by the IOC based both on a prior French (International) trade mark right for Olympic covering goods and services in Classes 16, 36, 38 and 41 and the IOC’s alleged reputation in the trade mark Olympic in France.

    The Opposition Division found that the IOC had the necessary reputation in the trade mark Olympic in France in relation to "sporting activities and the organisation and management of sporting events". They also found that, under the terms of Article 8(5), the fact that the earlier, reputed mark could be associated with, rather than confused with, the later CTM mark could be enough to establish similarity and that on this basis the Family Club Belmont Olympic label was similar to Olympic.

    The Opposition Division then reviewed the question of unfair advantage and detriment in some detail and concluded that it was possible that use of the CTM mark would adversely affect the rights of the IOC in the trade mark Olympic in France. Since the CTM applicant (Belmont Olympic S.A.) had given no justification for their use of Olympic in their label, the Article 8(5) opposition was said to be well founded and the CTM application was rejected in its entirety.

    It appears from the above CTM opposition that the IOC are determined to retain a monopoly of the words Olympic, Olympian and similar on the CTM Register. Thus, even if OHIM does not reject such marks on absolute grounds, an opposition filed by the IOC can be expected. In these circumstances, a third party’s CTM application will only proceed to grant if they can justify (that is, show due cause for) their use of a mark containing Olympic etc. in the European Union. Whether Olympic Oils’ use of Olympic in the UK in relation to oils and fats since 1990 would prove to be adequate justification remains to be seen.