Sara Ludlam, senior associate in the Intellectual Property department, Lupton Fawcett Denison Till, Sheffield, advises:
We have all been urged to get behind the Tour de France and maximise the opportunities. We certainly have at Lupton Fawcett Denison Till, as we are proud sponsors of “Le Grand Départ”.
However, as solicitors, with expertise in intellectual property, we are aware of the tight controls governing brand protection for high profile events. It is important to understand the difference between maximising the opportunities an international event brings and falling foul of claims for trade mark infringement or “passing off”.
Registered trade marks give you a monopoly right to use the word or logo for whatever goods or services you have listed in your specification. In the UK the words “Le Tour de France” and its logo are registered trade marks owned by Société Du Tour de France.
Welcome to Yorkshire also owns two trade mark applications associated with Le Grand Depart. This means no one can use those registered words or logos on the goods or services listed without the written permission of the owners.
The 1994 Trade Mark Act allows owners of famous brands to have stronger rights of protection than other trade mark owners. Any use without permission of identical or similar marks to “Le Tour de France” on any type of goods or services (whether included in the registered specifications or not) will be an infringement.
An owner of a mark which has a reputation and goodwill may also bring a claim for “passing off” even where it is not a registered mark. Passing off involves a misrepresentation which gives the public the impression your use of the mark is associated with, or has been authorised by, the trade mark owner. For example, although the words “Le Tour” are not registered, because the event is so famous, the owners and managers of “Le Tour” will be able to control use of these words.
However it is an absolute defence to a claim for trade mark infringement or passing off if the use of the mark is not “trade mark use”. For example, if you want to say: ‘Come and stay with us for Le Tour”, that is not trade mark infringement or passing off.
The economic argument for protecting brands is clear; if there were no restrictions, organisers would have nothing of value to sell to the sponsors. And without the millions in sponsorship, the world’s largest free sporting event could not be staged.
So take advantage of this once in a lifetime opportunity, but be aware of the issues and if in doubt take legal advice.
Contact Sara on 0113 280 2035 or email@example.com