A comparison of ambush marketing legislation in the United Kingdom and section 15A of the Merchandise Marks Act 17 of 1941

• Jurisdiction: South Africa
• Pages: 416-435
• Date: 25 May 2019
• Published date: 25 May 2019
• Author: Marianne Lombard

A COMPARISON OF AMBUSH MARKETING

LEGISLATION IN THE UNITED KINGDOM

AND SECTION 15A OF THE MERCHANDISE

MARKS ACT 17 OF 1941*

MARIANNE LOMBARD**

Lecturer, Department of Mercantile Law, University of South Africa

I INTRODUCTION

Ambush marketing is generally described as the unauthorised use, by the

competitor of an off‌icial sponsor, of the hype and goodwill generated by,

and associated with, a major international sports event.

1

The word

‘ambush’

2

refers to the perceived opportunism of the competitor, who is

not an off‌icial sponsor of the event but takes advantage of and uses the

event to promote its own brand or service. Ambush marketing is often

regarded as unlawful competition, because it may infringe the rights of

off‌icial sponsors.

3

One of the best-known and most-publicised examples of ambush

marketing took place in Atlanta at the 1996 Olympic Games of which

Reebok was an off‌icial sponsor. During a press conference before the 100

metre sprint f‌inal, Linford Christie, the defending champion, wore

electric blue contact lenses featuring a white Puma logo in the centre of

each lens.

4

This ingenious marketing stunt became the subject of much

media attention, and Puma, a non-sponsor, received more publicity

than did Reebok, the actual sponsor.

Although most countries have existing remedies for unlawful compe-

* This article is based on a dissertation for the LLM degree at the University of South Africa,

under the supervision of Prof RA Kelbrick. The author wishes to thank Prof Kelbrick for her

invaluable help and input.

** BLC LLB (UP) LLM (Unisa). Lecturer, Department of Mercantile Law, School of Law,

University of South Africa.

1

The term was coined by Jerry C Welsh while he was at American Express: see J C Welsh

‘Ambush marketing: What it is; what it isn’t’ Welsh Marketing Associates, available at

http://www.welshmktg.com/WMA-ambushmktg.pdf, accessed on 25 March 2014.

2

Ibid.

3

Others do not regard it as an infringement, but as a normal marketing strategy: see ibid

and the Indian case of ICC Development (Int’l Ltd) v Arvee Enterprises and Philips 2003 VII AD

(Del) 405 (‘the ICC case’).

4

Anonymous ‘Puma: contact lenses — Famous and infamous sports marketing stunts’

The Telegraph, available at http://www.telegraph.co.uk/news/picturegalleries/7831901/Famous-

and-infamous-sports-marketing-stunts.html?image=2, accessed on 25 March 2014.

416

(2014) 26 SA Merc LJ 416

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tition and intellectual property infringements, international sports

organisations still insist that potential host countries adopt special

legislation to protect both the organisers’ and their sponsors’ brands

before, during and after major sports events.

5

In most instances, the

event will not be awarded to a country if the sports organisation is not

satisf‌ied with the extent of protection afforded to it and to its associated

brand sponsors in the form of special legislation.

6

In South Africa, the common law of unlawful competition is well

developed and its general principles are based on the lex Aquilia.

7

Despite this, the South African legislature chose to introduce special

measures to accommodate the hosting of international sporting events

so as to meet the envisaged requirements of international sports

governing bodies.

8

One of these measures is section 15A of the Merchan-

dise Marks Act 17 of 1941.

9

This section, which is designed to counter

ambush marketing, will form the focus of this study. Section 15A is

classif‌ied as generic or umbrella legislation, which is legislation that can

be applied to any major sports event, in contrast to event-specif‌ic or sui

generis legislation drafted with a specif‌ic event in mind.

In the United Kingdom there are no general principles of unlawful

competition, only specif‌ic torts, and if a competitor’s conduct does not

fall within the scope of a specif‌ic tort, there is no remedy. For this reason,

it could be argued that there is a greater need for ambush marketing

legislation in the United Kingdom than in South Africa.

In view of the limited scope of this article, a detailed discussion of all

the relevant issues and questions pertaining to ambush marketing,

especially an evaluation of the common law, will not be undertaken. I

will assume that it is important that the rights of existing intellectual

5

Rachel Montagnon & Joel Smith ‘Marketing, advertising and the Olympics: How to avoid

falling at the f‌irst hurdle’ Practical Law (24 March 2010), available at www.http://

practicallaw.com/3-501-7013, accessed on 25 March 2014.

6

Louw discusses the example of the Netherlands’ and Belgium’s bid for the 2018 and 2022

Soccer World Cup, in which the Netherlands conf‌irmed in a letter that the intellectual

property rights of FIFA would be covered by existing intellectual property laws in the Netherlands.

FIFA responded by saying that this constituted non-compliance with the organisation’s bid

requirements. See Andre M Louw Ambush Marketing & the Mega-Event Monopoly: How Laws are

Abused to Protect Commercial Rights to Major Sporting Events (2012) 168.

7

Atlas Organic Fertilizers (Pty) Ltd v Pikkewyn Ghwano (Pty) Ltd and Others 1981 (2) SA

173 (T). Another example of how common-law principles should be used in a civil case is the

Indian ICC judgment supra note 3. Because of the limited scope of this article, a discussion

and evaluation of the common-law principles will not be possible.

8

Owen Dean ‘Fifa v Metcash — Owen Dean’s response’ AfroIP (13 October 2009),

available at http://afro-ip.blogspot.com/2009/10/fifa-v-metcash-owen-deans-response.html,

accessed on 25 March 2014.

9

Hereinafter referred to as the MMA.

AMBUSH MARKETING 417

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