The Brazilian legal framework on Ambush Marketing

Available legal tools against ambush marketing

Trademark Law – Trademark law stands as a key element to tackle ambush marketing since it is not uncommon to see non-sponsoring companies using similar logos or symbols to create an association with the event. Brazilian law prohibits the registration of names and symbols of official and officially recognized sports events, as well as confusingly similar imitations, except when authorized by the entity organizing the event.

With regard to use, the statute provides that infringement is committed by any person who “reproduces a registered mark without the authorization of the trademark owner, or imitates it in a manner that may lead to confusion”. This can be used in cases where the alleged infringer either reproduces the organizing entities’ trademarks or imitate them in a manner to create an association with the event. There is a nominative fair use defense, which might be asserted when the use is referential and non-commercial and is not likely to prejudice the mark’s distinctiveness.

Copyright Law – This body of law embraces original works of authorship and can be particularly useful to protect mascots, logos, posters, and the configuration of trophies. The copyright provisions are also important to protect the images of the games, once they are fixed in a tangible medium.

Unfair Competition Law – Unfair competition is a key element in cases where, despite not directly infringing trademarks or copyrights, the non-sponsoring company creates a fraudulent connection with the event. According to Brazilian law, “an act of unfair competition is committed by any person who uses fraudulent means to divert someone else’s clients”. There are some precedents whereby Brazilian courts have prohibited ambush marketing based on unfair competition provisions, especially where the advertiser is a competitor of an official sponsor of the event.

Sports-Related Issues Act – This statute creates a sui generis right and grants to sports administration entities exclusive rights to use and commercially explore their symbols and names, regardless the existence of a formal registration.

Olympic Act – This act was passed by Brazilian Congress in 2009. It has provisions designed to protect the Olympic symbols and prevent ambush marketing in relation to the 2016 Games. The act broadly defines the symbols and provides that, unless authorized by the IOC, the use of any symbol related to the Games is forbidden. The Act also enlarges the prohibition to cover the use of terms which, despite not included in the official list, are "sufficiently similar to them to the extent that they are able to invoke an undue association with the event."

FIFA World Cup Bill – Similar legislation concerning the FIFA World Cup is under consideration at Brazilian Congress. If approved, the act will grant FIFA exclusive rights over the expression “COPA”, “COPA 2014”, “COPA DO MUNDO”, amongst many others.

Brazilian case law on ambush marketing

Brazilian case law already has important precedents on ambush marketing. In CBF v. CEF, 2010, the Federal Court of Appeals for the 2nd Circuit faced a situation involving the Brazilian Football Confederation and a bank. The court granted a preliminary injunction against a campaign where some characters appeared in a football field using t-shirts which resembled the t-shirt of the Brazilian national team. In the decision, the court pointed out that this use “leads to an association of the Defendant with the national football team and symbols belonging to CBF” and suspended the campaign stressing that “it is necessary to prevent the free riding on the goodwill of these symbols in order to protect the rights of the sponsors of the event”.

In another case, CBF v. Petropólis, 2010, the Court of Appeals of the State of Rio de Janeiro upheld a preliminary injunction against a brewery which was conducting a marketing campaign during the World Cup using symbols similar to the national team’s crest. The court suspended the campaign emphasizing that “the use of signs almost identical to the Plaintiff’s shows a blatant intention of the Defendant to associate its beers to the national team” and that this association was illegal, “especially considering the fact that CBF is sponsored by the Defendant’s competitor”.

In COB v. Guanabara, 2009, the same Court of Appeals adopted a different view and maintained a campaign conducted by a supermarket chain which made association with the Olympic Games. The Court held that the symbols used by the Defendant were not similar to the Olympic symbols and concluded that the campaign was protected by principles of free competition and free expression. In this latter point, the court claimed “not objecting to the rights granted by national law to symbols used by the entity organizing the event”. However, it refused “to interpret the law as granting property rights over any new original artistic creation because such conduct would violate the freedom of speech.”

The above case law shows that Brazilian courts are sensitive to the rights and interests of the official sponsors, but are also attentive to other counter rights which might be involved.

Conclusion

Brazilian law has many legal provisions which can be asserted in ambush marketing cases. Given the unlimited opportunities created by the major sports events, the number of disputes of this nature will probably explode in Brazil. On one side, are the organizing entities and the official sponsors, who, relying on traditional IP rights and specific legislation, will not hesitate to fight the practice and for whom the mere association with the event is illegal. On the other, are other giant corporations who do not wish to stay out of the party and interpret the law as more flexible. Checking where courts will draw the line is an exciting issue to be followed closely in the forthcoming years.