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29 February 2020
Baron Pierre de Coubertin.
Does the name ring a bell?
As elite athletes all over the world prepare for the ultimate sports battlefield that is the Olympic Games set in Tokyo this July, another Olympics-related kind of battle is taking place. Only this time, it’s raging inside the courtroom and, yes, it does involve Baron Pierre de Coubertin.
So who is Baron Pierre de Coubertin?
The man is a legend in the pantheon of Olympic movers and heroes. A French educator in the late 1800s, he spearheaded the revival of the Olympic Games and became a founding member of the International Olympic Committee (IOC), an organization for which he served as president from 1896 to 1925.
More than 100 years after the modern Olympic Games were revived in Athens, the Olympics continues to be held every four years in major cities of the world like Tokyo, which first hosted the Games in 1964. Olympic gold medalists come home to their countries as heroes, earning accolades and providing inspiration. Many of them gain material wealth as well.
And what about Baron de Coubertin?
The man is enshrined in Olympic history, his sporting legacy to the world undenied.
The legal tussle began when the IOC opposed Dutch company Tempting Brands’ registration of the name Pierre de Coubertin for its menswear collection. These items are sold in different countries, including New Zealand and Australia. The IOC opposed the registration in these two countries. It said that though they did not register the trademark in the country and use it, de Coubertin is popular among New Zealanders who purchase merchandise from the IOC’s brick and mortar museum shop in Lausanne as well as online.
The Intellectual Property Office of New Zealand (IPONZ) dismissed the IOC’s opposition. According to IPONZ, not enough evidence on the awareness of Pierre de Coubertin as a trademark in the country was presented.
In the article “New Zealand vs Australia: Battle over rights to the name of the modern Olympic Games’ founder, Pierre de Coubertin,” published on the Davies Collison Cave website, Nick Holmes, a principal, and Janette Li, a trademark attorney, at Davies Collison Cave in Melbourne write: “In particular, the evidence of Pierre de Coubertin as a historical figure associated with the Olympic Games did not constitute use of the name as a trademark. Furthermore, in relation to the IOC’s evidence of its use of ‘Pierre de Coubertin’ online, the majority of that evidence did not refer to the IOC and there was no evidence of the number of New Zealand visitors to those pages. There was also no evidence as to whether New Zealanders visited or purchased from the Olympic Museum Store in Lausanne.”
Also, the IOC said that New Zealanders are interested in sports and the Olympics and, as such, they are aware of de Coubertin’s ties to the Olympics. The Davies Collison Cave article notes that IPONZ labels this as “merely expressions” of opinion.
Paul Johns, head of the dispute resolution practice at Baldwins in Auckland, agrees with the IPONZ ruling.
“I note that the IPONZ ruling has been upheld on appeal by the High Court of New Zealand. In order to succeed, the opponent needed to prove that the name Pierre de Coubertin had at least some reputation with consumers of the relevant goods in New Zealand,” Johns says. “There appears to have been little or no New Zealand specific evidence demonstrating this. The assistant commissioner at first instance seems to have thought that this reputation would need to have accrued through use of the name as a trademark and by the IOC itself. This may not be strictly correct. Section 17(1)(a) of the Trade Marks Act 2002 prohibits registration of mark, the use of which is likely to deceive or cause confusion. It would be possible for New Zealanders to be confused if they knew of Pierre de Coubertin and his connection with the Olympic movement, even if the IOC had not used his name as a trademark in New Zealand. Consumers could well still assume goods sold under the ‘Pierre de Coubertin’ mark were connected with the IOC if they closely associated that name with the organization. In any event, there was no evidence filed that New Zealand consumers made such a close association, although such evidence may well have been available had it been looked for.”
Johns himself recalls having been taught about de Coubertin’s role in the Olympic Games at primary school. He adds that the Olympics is very popular among New Zealanders.
“Olympic gold medal winners become household names and are sought after by advertisers to endorse a wide range of goods and services. It is a criminal offence in New Zealand to use without authorization various words and symbols associated with the Olympic Games, suggesting that use of such material is taken to be likely to deceive or confuse. My belief is that Pierre de Coubertin’s name and his association with the Olympic movement would be well known in New Zealand,” says Johns.
According to the article, the IOC neither filed written submissions nor appeared at the opposition hearing.
“Although it might have made some difference if the IOC filed written submissions and/or attended the opposition hearing in New Zealand to highlight particular parts of its evidence, the simple fact is that the evidence was not sufficient to establish the grounds,” says Li. “This was demonstrated when the IOC appealed the decision in the High Court of New Zealand and affirmed the IPONZ decision, which indicates that despite the IOC’s advocacy, the IOC’s lack of direct evidence of use in New Zealand proved to be insufficient in any case.”
Johns agrees that it would not have made a difference, saying that the IOC and Tempting Brands appeared at the High Court appeal hearing. Both parties also had seasoned IP specialist barristers. Yet, the IPONZ decision was upheld.
“Had the IOC appeared at first instance, its counsel could have tried several ways to improve its case if the problems with its evidence became apparent at the hearing,” Johns explains.
“First, counsel could have emphasized any evidence at all showing that the name Pierre de Coubertin is known in New Zealand. It appears that this was attempted on appeal but the evidence was simply not sufficient. Secondly, counsel could have suggested that Pierre de Coubertin and his connection with the Olympic Games, were so notoriously well-known in New Zealand that the assistant commissioner could accept those facts without requiring evidence, as permitted under the Evidence Act 2006. This approach does not appear to have been taken on appeal. It would have required convincing the judge that the presumed reputation was so well established that it could not be reasonably questioned, which is a very high threshold. Such an argument might succeed with incredibly well-known deceased figures, for example Adolf Hitler and his connection to Nazism, but perhaps not for more mildly famous figures. Thirdly, counsel for the IOC at first instance could have emphasized that Section 17(1)(a) does not necessarily require an opponent to prove reputation through use of the relevant mark either as a trademark, or use by itself. Other circumstances can still give rise to a likelihood of confusion or deception. This point does appear to have been raised on appeal but failed for lack of evidence even to support that argument.”
According to Johns, Comite International Olympique v. Tempting Brands Netherlands emphasizes the well-established need to file evidence of high quality at first instance in New Zealand trademark oppositions.
“It should be noted that IPONZ proceedings generally require evidence of a standard suitable for High Court litigation. This is because the High Court hears appeals from IPONZ on the same evidence,” he says. “There is only a very narrow right to adduce new evidence on appeal, generally limited to evidence not available earlier.”
Citing Not Your Average Backyard Variety Swing Limited v. Elvis Presley Enterprises, Johns says the two cases are similar.
“In the opposition proceeding, the opponent failed to establish the requisite reputation in New Zealand having filed evidence focused on Elvis Presley’s international reputation with no direct reference to New Zealand. In this case, the relevant services – canyon swing services promoted to tourists and thrill seekers – were also not very closely associated with Elvis Presley,” he explains.
As Johns mentions, the IOC appealed the decision. The High Court of New Zealand dismissed the appeal on September 30, 2019.
In Australia, however, the story is different.
The IOC filed submissions and appeared at the hearing. On March 25, 2019, the Australian Trade Marks Office (ATMO) ruled in favor of the IOC.
The IOC’s evidence included materials about the yearly Pierre de Coubertin Award and its 15,862 awardees who come from all around Australia. Some of the articles constituting the evidence mentioned that the award is named after the founder of the modern Olympic Games.
Established by the Australian Olympic Committee in 1992, the Pierre de Coubertin Award is given to secondary school students who take part in sports activities and embody the values and ideals of the Olympics.
“[The Pierre de Coubertin Award] does receive some media attention each year, but it does not seem clear that it is widely known by most Australians,” says Holmes, who is also a trademark attorney.
The IOC also gave statements that Australians are indeed familiar with de Coubertin since he was honored at the Olympic Games in Melbourne in 1956 and in Sydney in 2000 and in other public occasions.
“In the ATMO decision, the delegate accepted that the Australians are aware of Pierre de Coubertin because he is honoured publicly in numerous ways,” says Li. “This is to be contrasted with the IPONZ decision where similar evidence was held not to demonstrate the requisite level of reputation required to establish a connection between Pierre de Coubertin and the IOC.”
Asked if he personally thinks that Baron Pierre de Coubertin is known to many Australians as the founder of the modern Olympics, Holmes doubted that the general public is aware of that connection. However he noted that the relevant opposition ground does not necessarily require a significant proportion of the general public to be aware of the connotation conveyed by the name Pierre de Coubertin.
In the end, the IOC was able to prove that indeed, the use of “Pierre de Coubertin” as trademark for menswear by Tempting Brands will be likely to deceive or cause confusion in the Australian market.
While he agrees with the IPONZ ruling, Holmes questions the ATMO decision.
“The evidence presented to ATMO did not necessarily establish that a sufficient proportion of Australian consumers were aware of the connotation in the name Pierre de Coubertin to demonstrate the requisite level of likely consumer confusion to establish the relevant opposition ground,” he says.
In contrast, John believes otherwise.
“Section 43 of the Australian Trade Marks Act 1995 is in similar terms to New Zealand’s Section 17(1)(a) and is applied in a similar way,” he explains. “In contrast to New Zealand, there was evidence in the Australian proceeding showing specifically that the name Pierre de Coubertin was known in Australia in connection with the Olympic movement. There was therefore an evidential basis, absent in New Zealand, for finding that some Australians at least might be deceived or confused by the use of that name as a trademark by an entity not connected with the Olympic movement.”
With Tempting Brands having filed an appeal at the Federal Court of Australia, the legal battle in Australia is not over. The next case management hearing was set for January; the Davies Collison Cave lawyers anticipate the decision to be handed out in the middle of the year.
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