AMBUSH MARKETING & TRADEMARK INFRINGEMENT - THE NEED FOR LEGISLATION IN INDIAN LEGAL SCENARIO (By-Vikash Kumar)
Ambush
Marketing & Trademark Infringement - The Need for Legislation In Indian
Legal Scenario
Authored By-Vikash Kumar LL.M. WBNUJS
“When you look at sports leagues today, they manage a lot of intellectual
property, which means it takes you into a lot of different kinds of businesses.”[1]
Introduction
The act of
ambush marketing is not new at the global level. During the 1980s, the word was
coined by Jerry Welsh, the marketing guru, and manager of the company American
Express during the 1980s.[2] The
Cambridge Dictionary defines the term ambush as “the act of suddenly attacking
someone from a hidden place.”[3] Now
let’s try to understand what comes under the ambit of ambush marketing. Imagine
a cricketing league named American Premier League. ABC Company is the event's
main sponsor and invested millions of money in buying the sponsorship tag. But,
the company XYZ clothing strategically sends their people to the ground in
their own merchandise signifying the brand name. XYZ reserves their seats below
the scoreboard, below the main screen, and behind the umpire, because the camera
will focus on their brand name as much as possible. In this example, only
investing in thousands attracted lots of attention, and many viewers may
presume that XYZ is the main sponsor, which promotes their goodwill. The
situation is harsh for ABC because they paid the hefty sum for the sponsorship
but didn’t receive a satisfactory result. This act of unethical marketing
adopted by XYZ comes under the ambit of ambush marketing. Ambush marketing is a
type of marketing in which the other company hijacks the advertisement campaign
of the official sponsor to mislead & confuse the viewers about who the
official sponsor is. These unethical practices are common in major world events
like Olympic Games, International Cricket Council Cricket World Cup, Indian
Premier League, FIFA, etc.
Market
& legal experts highlight several reasons behind this parasitic marketing
approach, like the short period of an event & its impossibility to prohibit
these kinds of marketing strategies, negligible registration of cases, using
disclaimer to avoid legal suits & lack of judicial precedents.
The above discussion raises the question that
ambush marketing violates which types of intellectual property. Directly &
indirectly, the unethical practice of ambush marketing violates different types
of intellectual properties like trademarks, copyrights, etc. But, this research
project will include the effect of ambush marketing on trademark law only. The critical
issue here is whether there are regulations to regulate ambush marketing in
Indian intellectual property laws specifically in the trademark laws or whether
there is a need for the legislation to tackle ambush marketing in India.
While
answering these questions, this project will emphasize first the evolution of
these unethical practices of ambush marketing, what are the types of ambush
marketing are prevalent worldwide, how the Indian Judiciary responded to this
issue, what are the prevailing laws & the need for the legislation to
combat the practices of ambush marketing.
History Of Ambush Marketing
As
discussed above, it was coined during the 1980s. During the 1984 Summer Olympics
which were held in Los Angeles.[4]
The Japanese company Fuji was the official film sponsor of the event. During
the event, the rival company Kodak, an American company, bought a large amount
of advertisement space on television. Further, Kodak's presence on the Olympic
track was everywhere during the event. Because of this, they created the
impression that they were the official film sponsor of the event and not the
Fuji.[5] This
event was considered the first alarm for the significant organization that
conducts events on a global stage.
Even in the
1994 winter Olympic Games, the same kind of approach was adopted by American
Express. In that event, Visa paid $40 Million to International Olympic
Committee for the sponsorship and provided them the exclusive rights to
regulate credit card services during the event.
During that event, American Express, in its
advertisement, used the voice note that “if you are traveling to Norway, all
you need is a passport but don’t need a visa.” Even the International Olympic
Committee accused American Express as a parasite for the Winter Olympic Games of
misleading advertisements.[6] In
the justification, American Express highlighted that they have been running
their business throughout the country of Norway since 1916.[7] They
are not under obligation to take permission from the International Olympic
Committee & or the Visa. In this, the International Olympic Committee, Visa
& many market experts accused American Express of ambush marketing. The
judicial discourse of ambush marketing was triggered by National Hockey League (NHL) et al. v. Pepsi-Cola Ltd.[8] .
It widely supported the ambushers subject to it doesn’t violate trademark in
the name of the campaign.
Even in the
Indian Context, the same dispute arose in the 1997 Asia Cup, a cricket
tournament. In this event, Pepsi was the official sponsor, but Coca-Cola owned
the rights for the television sponsorships for the same event.[9] Coca-Cola
used its rights of television sponsorship to confuse people
Types Of
Ambush Marketing
To
understand the unethical practices of ambush marketing, it is essential to
understand the types of ambush marketing prevalent worldwide. Mainly, three
types of ambush marketing are further divided into other parts. The types &
the subtypes of ambush marketing are discussed below.
Direct
Ambush Marketing
Under
this, a brand without any sponsorship or right but by aggressive campaign
associates themselves with the main event. Under this brand intentionally tries
to seek the viewers' attention despite the fact they are not the official
sponsor & don’t have any rights in the event.[10]
The incident
of the 1994 FIFA World Cup event is a prime example of this. In this, the
MasterCard was the official sponsor of the event, but the Sprint Communication
used the logo of
FIFA in
their advertisement. Sprint Communication used the logo without the organizer's
permission, i.e., FIFA.[11]
These are
further divided into subtypes as discussed below;
·
Predatory Ambushing
Under
this, the other company purposely/intentionally targets & attacks the
campaign of the official sponsor to confuse & mislead the public
intentionally. In the Indian context, the 1997 Asia Cup, where Pepsi was the
official sponsor, and Coca-Cola used the television sponsorship right to create
confusion.[12] In the International
context 1994 winter Olympic Games as discussed above comes under this.
·
Coattail Ambushing
Coattails
are a cloth attached to a jacket that hangs from the back. Under this kind of
marketing, the brand attempted to connect with the event, and this attempt was
not through sponsorship but from other methods. The prime example of this is
the 2016 Rio Olympic incident. Adidas was the official sponsor of the event.
But Usain Bolt, after winning the gold medal, lifted his shining golden Puma
Shoes like an award. Puma has also done an extensive campaign on social
networking sites with the hashtag #ForeverFaster.[13]
·
Property or Trademark Infringement
Small
brands often adopt these marketing strategies. In this, they use the
trademarks, logos, symbols, etc., of the event to promote their product and
confuse the viewers as well as the customers. In global events like the Olympics,
the organizing committee appoints officers to protect the brand of official
sponsors.[14]
·
Self-Ambushing
The
concept of self-ambushing is interesting because many consider this as not a
sub-types of ambushing but merely an infringement of the contract between the
sponsor & the organizers. As in this, the official sponsor goes behind the
terms of the sponsorship contract. The same incident happened in the 2008 UEFA
European Championship.
Carlsberg was the event's official sponsor,
but some other companies had the right to distribute free merchandise during
the event.[15] But,
the Carlsberg gifted freebies during the event and violated the sponsorship
contract.
Indirect
Ambush Marketing
In this,
the companies indirectly associate with the advertisement's opponent brand
campaign. Under this, the company uses the opponent company's photos, symbols
& words. In these marketing strategy, the approach is not intentional or
aggressive but only to find some attention from the event & to associate
the marketing strategy of the opponent brand.[16] They
are further divided into sub-types as discussed below;
·
Associative Ambushing
Under
this, the company uses slogans, phrases, and images for its advertisement
campaign. Subject to these rights are not protected by intellectual property. The
main objective is to create confusion that the brand has some connection with
the event.
·
Distractive Ambushing
This
approach is used to distract the consumer. For example, MasterCard is the
official sponsor of a friendly match of Arsenal v. Manchester United. Still,
Visa has fixed a stall just before the entrance gate of the stadium without
making any target to the sponsor.
·
Parallel Property Ambushing
In this,
the opponent brand sponsors a similar kind of event to divert the viewer's
attention. Many marketing experts didn’t consider this unethical and considered
this a strategy to improve their brand’s goodwill.[17]
·
Insurgent Ambushing
This
includes aggressive promotional activity like a skit or flash mob during an
event. In this approach, the main objective is to distract the audience from
the official sponsor.[18]
Incidental
Ambush Marketing
Even in
this, the company approach is unintentional, but the campaign incidentally ambushes
the official sponsor's advertisement campaign. In this, the brand exhaustively
campaigns equivalent to an official sponsor.[19]
Under this, people are confused and start believing them as the official
sponsor. Last year in 2021, the Indian Premier League was sponsored by Vivo,
that is a Chinese mobile brand, but the company Cred bombarded their
advertisement on television during the show. This comes under the ambit of
incidental ambush marketing. They are further divided into two; the first is
unintentional, where viewers consider the rival the official sponsor because of
the prior association. The second is the saturation ambushing where the other
brand drastically increases its advertisement during the event, confusing people
regarding the event's official sponsor.
In a few
studies, the ambush market is divided into three types: direct ambushing,
associative ambushing, & incidental ambushing.[20]
Trademark
Law In India
The
globalization of trade demanded uniform minimum standards of protection,
adequate procedures & efficient enforcement methods, which is why world
leaders recognized TRIPS. India under obligations, introduced the ‘Trademarks
Act, 1999’. The primary purpose of the act is to safeguard the right of the
business from unfair competition.[21]
The ambit of the act is so vast that it also protects the company's goodwill. The
other objective of the act is it helps the consumers to avoid confusion and
protects them from deception & mistakenly believing that the product originates
from another trader.[22]
Legal Protection
For Ambush Marketing In India
In the context
of ambush marketing, only section 29 of the trademark act 1999 is crucial under
trademark laws of India. The provision highlights infringement of registered
trademarks. Under this, if any opponent company uses the registered trademark
of the official sponsor or mark which is identical or even deceptively similar
without the permission of the official sponsor in the course of the trade, then
it comes under infringement of the registered trademarks.[23]
Even section 29 of the act is general in nature & applied indirectly in
ambush marketing cases. Arsenal
Football Club plc v. Mathew Reed[24]
is a prime example of this, but this case doesn’t come under
the ambit of Indian trademark law. Under trademark laws of India, there are no
specific provisions to prohibit, punish & or regulate ambush markets in
India.
In light
of judicial precedent, there is only one case of ambush marketing in India by the
Hon’ble Delhi High Court, i.e., ICC
Development (International) Ltd. (ICCDL) v. Arvee Enterprises and Another[25]. In 2003, ICCDL was organizing the ICC
2003 World Cup, and before the event, the ICCDL applied for the trademark on the
terms ‘ICC World Cup’, ‘Logo, & ‘Mascot.’ Philips in his advertising
campaign during the event introduced interesting slogans like “Diwali Manao
World Cup Jao” and aggressively promoted the slogans on televisions, radio,
etc. In that event, Philips has no sponsorship agreement with the ICCDL.[26] Aggrieved
by that, ICCDL approached Delhi High Court against Philips for their
advertisement campaign of using the word ‘World Cup’ in their slogan. ICCDL
contended that they had already filed the application to register the
trademark. In this, the exclusive right is given to the official sponsor who
paid the sponsorship fees, and Philips has no right to use the term ‘World Cup’.
The court rejected the contention of ICCDL and said that the word ‘World Cup’
is generic in nature, and Philips is not indulged in misusing the logo of the International
Cricket Council.[27] Further,
the court emphasized that there is no confusion among the viewers &
consumers on the issue of actual sponsors. But interestingly, the court granted
an injunction on the unfair use of the ICC logo by Philips. Apart from this,
there is no judicial discourse on ambush marketing in India.
The Need
For Anti-Ambush Market Laws In India
The above
contention justifies that there are no specific provisions and judicial
discourse on ambush marketing in India. The objective of trademark law is
failing to achieve its objective after introducing such a parasitic approach to
marketing. Apart from this, several reasons also justify the need for
legislation on ambush marketing in India. A few of them are discussed below;
·
Anti-Ambush marketing legislation is already
prevalent in different countries- Developed countries like the USA have
anti-ambush laws incorporated under the Lanham Act, which recognize the rights of
the official sponsors. The trade practices act 1976 in South Africa, the Sydney
2000 Games (Indicia and Images) Protection Act 1996 in Australia, Major Events
Management Act 2007 in New Zealand are a few of the examples of Anti-ambush
laws prevailing worldwide.[28]
Apart from them, there are several other countries like Canada, Brazil, China,
etc., have enacted laws to prevent ambush marketing in their jurisdiction. In a
globalized world where the competition among the countries is so high, the absence
of these laws will not give a good impression to foreign investors.[29]
·
Affecting the goodwill of the company- One of the
main objectives of the sponsorship is to capitalize on its goodwill. But, the
rival companies, by associating themselves with the event or with the sponsor
company, affect the growth of the goodwill of the sponsor company.[30]
Like in the last Indian Premier League, Vivo was the official sponsor, but Cred,
that is a credit card payment company, stole the show with their advertisement
campaign.
·
Ambush marketing has a long history- The issue of
ambush marketing is very long and can be traced from the 1980s. But still,
countries like India have no legislation to prevent ambush marketing. Even the
first ambush marketing incident was in the 1990s, i.e., during the Asia Cup,
and even after two decades, there are no laws on ambush marketing.
·
Massive investment in Sports Events in India- The
investment by companies in sports events is increasing drastically. In 2022,
the Indian Premier League sponsorship cost was
above Rs
1,000 Crore.[31]
Imagine if a company is investing such huge money and still their rights are
not protected because of the ambush marketing. Apart from this, other leagues
of football, hockey, kabaddi, etc. The international player comes to India for
the tournament, which attracts International media as well.
·
Low literacy rate in India- The literacy rate in
India is low, which makes it easy for the big corporate house to confuse people
about the sponsors. If the other brands use the method of ambush marketing,
then the sponsor’s objective to reach every level of India not be fulfilled.
Conclusion
In
recent times, ambush marketing is considered one of the strong methods for
advertisement but is also considered as unethical in nature. In International
& National sports events, these practices are quite common. Indian laws
don’t have anti-ambush provisions to safeguard the sponsor's rights in these
events. With regard to trademark laws in India, there is an urgent need to
introduce changes to incorporate anti-ambush provisions. There are different
aspects of anti-ambush marketing. A few of them are done direct & others
are indirect or incidental. The new law must also respect the distinction and
prevent only those which are intentional in nature. The other argument is that
the law on ambush marketing affects fair competition and promotes monopoly in
the market. The other rival companies lawfully promote their product in many
cases. But, this argument will contradict the concept of sponsorship &
exclusive rights of the sponsorship. In a globalized world, many countries enact
laws to regulate ambush marketing strategies in their jurisdictions. Many
developing countries are also on the list that has anti-ambush marketing law. Further,
the other countries started recognizing it since the 1980s, but after four
decades, India has not made any progress on the anti-ambush law.
In the Indian
context, the situation is a little drastic after the ICCDL Case[32],
where the court was slightly inclined toward the ambushers. Under trademark
laws, protection is only if the rival uses the registered trademark's logo,
symbols, or slogans directly, and any other approaches are not penalized under
the act. The ambit of ambush marketing is vast, and sec. 29 of the act is
inefficient in preventing the unethical parasitic practice. In light of the
above argument, there is an urgent need to introduce legislation to combat
these guerrilla market strategies and contribute to the country's economic
development.