MGM caught in Miss Asia trademark infringement spat

25 January 2021

MGM caught in Miss Asia trademark infringement spat

On January 3, 2021, Asia Star TV held the worldwide final of the Miss Asia Pageant 2020 at the MGM Cotai Theater in Macau. Yet, Asia Star TV nor MGM own any IPRs related to the beauty contest, according to a declaration that was published by Asia Television Hong Kong (ATV), the IP owner of event.

In the declaration found in Macao Daily News, ATV emphasized that it is the sole owner of any IPRs associated with Miss Asia, in both Hong Kong and China.

The broadcaster condemns the alleged violator for openly breaching the law and damaging the rights of ATV.

MGM, the owner of Cotai Theater, told the news outlet that it has “no comment on any dispute between third parties not linked to MGM” and claimed that it “was solely a venue rental by the organizer.

So, are venue owners liable when event planners organize trademark infringing events at their premises and if so, what would the punishment be?

“From a contractual perspective, as between the parties, this would seem unlikely. Of course, this will depend on the precise terms of the contract between the venue owner and the meeting planner. More often than not, such contracts would contain provisions relating to the use of trademarks (and other IPRs) by the venue owner and/or the meeting planner. For example, a venue owner would often require the meeting planner to represent and warrant that it has the right to use any trademarks that are proposed to be used at an event, without infringing the rights of any third party. Therefore, in the event of any infringement of a third party’s trademark, the meeting planner would be in breach of the contract, and liable to the venue owner,” says David Swain, partner and head of intellectual property at Lewis Silkin’s Hong Kong. “A venue owner may also have asked for an indemnity from the meeting planner such that, in the event of any third party claim being made against the venue owner for alleged infringement of such third party’s trademark, the meeting planner would indemnify the venue owner in relation to such a third party claim. In this case, although the venue owner may be liable for secondary infringement in certain circumstances, the liability would effectively have been passed on to the meeting planner.”

“On the other hand, a meeting planner may seek a disclaimer that it is not responsible for the use of any trademarks at the venue, in which case, the meeting planner may not be liable to the venue owner, though the meeting planner may still be liable to a third party for infringement of a third party’s trademark,” Swain says. “In this case, although we do not know whether any action will be brought by the trademark owner against the venue owner, ultimately it is clear that venue owners should always seek appropriate legal advice and contractual protection when negotiating with meeting planners.”

Prior to the aforementioned incident, ALLINMEDIA already reported that two beauty contests under the name Miss Asia were recorded last year in China. Immediately after, ATV filed a lawsuit against the alleged violator and an interim injunction order was issued to suspend further events held in the same name.

To avoid more confusion, ATV is revoking the titles of the worldwide contest winners in the years 2016 to 2018.

Before moving everything online, ATV was the oldest conventional television broadcaster in Hong Kong until its termination in 2016.


Johnny Chan

Law firms

Please wait while the page is loading...