Argentine court validates first claim of ambush marketing
The Court of Appeals reversed the decision of the lower court denying the injunction filed against Unilever and ordered the defendant to cease immediately the advertising campaign that used the phrase ‘official sponsor of all we learnt while we are growing’ and to remove already-published advertisements on any medium.
Argentine trade mark law provides that a trade mark holder has a right of property over its trade mark. This right provides for actions against infringers, including the right to the exclusive use of the mark and the right to prevent third parties from using identical or similar marks for goods which are identical, or similar, to those covered by the trade mark registration (or even different goods in the case of well-known trade marks), where such use would result in a likelihood of confusion or a risk of association.
In Argentina, there is no special statute on unfair competition, and cases dealing with this area of law are scarce. There are several enactments which may be applied to actions that could be included in the concept of unfair competition such as Article 10bis of the Paris Convention, Article 39 of the Agreement on Trade-related Aspect of Intellectual Property Rights (‘TRIPS Agreement’), s 159 of the Argentine Criminal Code, the Fair Trade Act (Law No 22.802) and the Trade Secrets Act (Law No 24.766). Nevertheless, Argentina has not passed a specific law on unfair competition. Nor are there any specific statutes in Argentine law relating to ambush marketing or protection of sponsored events.
Thus the only solution available in ambush marketing cases has always been traditional trade mark law. Trade mark infringement requires use of the trade mark, or association with the trade mark, with the aim of creating consumer confusion or unauthorized association between the owner of the trade mark and the infringer. Application of traditional trade mark law to advertising and ambush marketing has been troublesome, since this kind of advertising usually does not mention the trade mark. Typically, therefore, there was no trade mark use in the sense of the statute.
Javier Mascherano, one of the players of the Argentine soccer team in the World Cup Brazil 2014, appeared in a Procter & Gamble (P&G) advertisement for the laundry detergent trade marked ‘ALA’. The advertisement had been launched on TV and on the internet a few days before the World Cup Brazil 2014 started, portraying a kid (representing Javier Mascherano) playing soccer with other kids and wearing a t-shirt with the Argentine colours, white and light blue (at this stage, there had been no use of any Asociación del Futbol Argentino (AFA) trade marks). Later in the video, Javier Mascherano himself appears wearing a blue t-shirt with ‘No 14’ in his back (his number as a player in the World Cup Brazil 2014), carrying a ball in his hand and entering the football field through a tunnel. Finally, an announcer's voice is heard off screen, saying: ‘ALA, official sponsor of all we've learnt growing up’. The advertisement on the internet was slightly different, and the announcer said ‘ALA, we are ready to give it all’ (available at www.youtube.com/watch?v=UFKZQ7SCVtM (accessed 20 August 2014)).
The AFA is the governing body of football in Argentina. It organizes professional soccer tournaments in all categories in Argentina, including the Argentine Cup and the Supercopa; it also represents the Argentine national soccer team.
P&G is a multinational manufacturer of personal care, household and cleaning products. In Argentina, the company manufactures the laundry detergent ‘ARIEL’, and this product is a direct competitor of Unilever's laundry detergent ‘ALA’. P&G sponsors of the Argentine National Football team under an agreement with the AFA.
Santa Mónica de Argentina SA is a commercial agent for the AFA and a licensee of the AFA trade marks. And lastly, the defendant, Unilever, is the company that markets the laundry detergent ‘ALA’ and the company behind the challenged advertisement.
The injunction was based on Article 50 of TRIPS, which has direct effect in the Argentine legal system, Article 10bis of the Paris Convention, the trade marks owned by P&G and the sponsorship agreement between P&G and the AFA.
With respect to ambush marketing, the court held, considering the upcoming World Cup Brazil 2014, that the advertisement could reasonably create confusion among consumers who could wrongly believe that Unilever and their product ‘ALA’ were the official sponsors of the Argentine National Football team. This, according to the court's view, could have a negative impact on the company that was the sponsor of the Argentine National Football team in the World Cup Brazil 2014.
The court also relied on a survey prepared by one of the plaintiffs, which concluded that 8 out of 10 people interviewed thought that ‘ALA’ was actually the official sponsor of the Argentine National Football team.
With respect to the procedures to obtain an injunction, we note that the injunction was based on Article 50 TRIPS, the legal remedy to cease an infringement in Argentine courts. Nevertheless, in this case there was no claim of an intellectual property right infringed (as defined in TRIPS, Art 2(1)), considering that there was no use of the plaintiffs' trade marks in the advertisement or any other ‘intellectual property right’. However, the court's ruling also made a general reference to unfair competition based on Article 10bis of the Paris Convention and Article 42(2) of the Argentine Constitution.
This ruling may have two interpretations: (i) the injunction was wrongly based on Article 50 of TRIPS because there were no intellectual property rights infringed, or (ii) Article 50 also lets a claimant obtain temporary relief based on unfair competition claims. This may be the case considering that TRIPS Article 2(1) established the obligation of all members to comply with the Paris Convention provisions (Arts 1–12, including Art 10bis). In fact, Article 2(1) TRIPS clearly provides that ‘in respect of Parts II, III and IV of this Agreement, Members shall comply with Articles 1 through 12 … of the Paris Convention (1967)’.
With respect to ambush marketing, this ruling may encourage sponsoring companies and organizers of sport events to resort to courts to block non-authorized sponsors who will always try to benefit from the goodwill of the sport event. However, the line between what is permitted and forbidden is still not entirely clear. No one can claim a monopoly over evoking, or making a reference to, a sport event (without using third-party trade marks or trying to cause confusion among consumers regarding the sponsorship of the event). Nevertheless, there is a very fine line between evoking, or making a reference to, a sport event and trying to create confusion or taking an unfair advantage of a false sponsorship.
Finally, the court of appeals relied on the evidence survey to grant the injunction. If one were to ask a trade mark lawyer in Argentina about the possibility of using a survey, the probable answer prior to this case would have been that surveys are not allowed. No law forbids them but filing them is not standard practice to file them and case law offers no guidelines for assessing them. This case opens the door to further uses of survey evidence in trade mark litigation to prove consumer confusion.
© The Author(s) (2014). Published by Oxford University Press. All rights reserved.