Commonwealth of Australia Explanatory Memoranda Commonwealth of Australia Explanatory Memoranda[Index] [Search] [Download] [Bill] [Help]
2004 - 2005
THE PARLIAMENT OF THE COMMONWEALTH OF AUSTRALIA
HOUSE OF REPRESENTATIVES
MELBOURNE 2006 COMMONWEALTH GAMES (INDICIA AND IMAGES)
PROTECTION BILL 2005
EXPLANATORY MEMORANDUM
(Circulated by authority of Senator the Hon. Rod Kemp, Minister for the Arts and Sport)
1
MELBOURNE 2006 COMMONWEALTH GAMES (INDICIA AND IMAGES)
PROTECTION BILL 2005
OUTLINE
The Melbourne 2006 Commonwealth Games (Indicia and Images) Protection Bill 2005
(the Bill) is designed to prevent the unauthorised commercial use of certain indicia and
images associated with the Melbourne 2006 Commonwealth Games, in order to provide a
more secure environment in which the Melbourne 2006 Commonwealth Games
Corporation (the Corporation) can raise revenue through sponsorship and can prevent
ambush marketing.
Ambush marketing is a term used to describe conduct which gives rise to a perceived
association between an entity and a major event, for commercial advantage, but where the
commercial entity has not paid for the right to claim the association. Ambush marketing
can confuse the public as to the identity of the real sponsors.
The Government is committed to supporting the staging of the Melbourne 2006
Commonwealth Games (Melbourne Games). The Bill seeks to provide support to the
Melbourne Games that is similar to the support provided to the New South Wales
Government, at the time of the Sydney 2000 Olympic Games, through the Sydney 2000
Games (Indicia and Images) Protection Act 1996.
The Melbourne Games will be held in Melbourne from 15 to 26 March 2006. The Bill will
provide protection for Melbourne Games indicia and images in the lead up, during, and in
the immediate aftermath of the Games. The protection of indicia and images during this
period will enable the Melbourne 2006 Commonwealth Games Corporation to protect
existing sponsors, attract additional sponsors, and achieve its sponsorship revenue targets.
In turn, this will reduce the drain on the public purse.
The Bill will provide the Australian Customs Service with the authority to seize
unauthorised goods in the same manner it was able to perform this function at the time of
the Sydney 2000 Games.
Key features of the Bill include:
an authorisation scheme to restrict the use of key words, phrases and images
associated with the Melbourne 2006 Commonwealth Games. The scheme refers to
and incorporates elements of the authorisation scheme established by the
Commonwealth Games Arrangements Act 2001 (Vic);
a range of potential remedies including injunctions, damages, accounts of profit,
corrective advertisements and seizure of goods by the Australian Customs Service;
and
2
a sunset clause such that the Bill will cease to have effect from the end of 30 June
2006.
FINANCIAL IMPACT STATEMENT
The Bill is not expected to have any financial impact on Commonwealth expenditure or
revenue.
3
REGULATION IMPACT STATEMENT
Problem or Issue Identification
The Melbourne 2006 Commonwealth Games (M2006 Games) will be a significant
international sporting event. The Victorian Government is aiming to raise $130.0 million
in sponsorship revenue from the Games. In return for their Games sponsorship, sponsors
can publicise their support by using M2006 Games indicia and images. However,
businesses that do not sponsor the M2006 Games may seek to capitalise on the Games by
using M2006 Games indicia or images, suggesting a sponsorship arrangement with the
Melbourne 2006 Commonwealth Games Corporation (M2006 Corporation). This is
called `ambush marketing'.
If sponsors do not have certainty that they are the only businesses that can capitalise on
support for the M2006 Games, they may withdraw their sponsorship. A decrease in
sponsorship revenue could increase the need for Games-related expenditure by the
Victorian Government, which may lead to a further approach to the Australian
Government for additional financial assistance.
The problem of ambush marketing has previously been recognised in relation to the
Olympic movement. Legislative mechanisms such as the Trade Marks Act 1995,
Copyright Act 1968, Trade Practices Act 1974, and the Designs Act 1906 were deemed
inadequate to prevent incidents of obvious ambush marketing relating to the Olympic
movement. For this reason, the Olympic Insignia Protection Act 1987 (OIPA 1987) and
the Olympic Insignia Protection Amendment Act 2001 were enacted to provide
legislative protection to the Australian Olympic Committee of certain Olympic insignia.
The Sydney Organising Committee for the Olympic Games (SOCOG) and the Sydney
Paralympic Organising Committee (SPOC) were beneficiaries of Commonwealth
legislative protection of certain Olympic and Paralympic insignia for the Sydney 2000
Olympic Games and Paralympic Games under the Sydney 2000 Games (Indicia and
Images) Protection Act 1996. This protection ended on 31 December 2000.
The proposed M2006 Games indicia protection legislation seeks to give the M2006
Corporation the same style of event-specific protection as was afforded to SOCOG and
SPOC, providing a legal defence for the M2006 Corporation and its sponsors against
ambush marketing. Without such protection, the M2006 Corporation will have to rely on
the Trade Marks Act 1995, Copyright Act 1968, Trade Practices Act 1974, and Designs
Act 1906 to protect its indicia and images. In addition to existing Commonwealth
intellectual property legislation, the Victorian Government enacted its own Commonwealth
Games Arrangements Act 2001 to provide M2006 indicia and images with further
protection.
4
Specification of the Desired Objectives
The primary objective of the proposed M2006 Games indicia protection legislation is to
support the M2006 Games.
The secondary objectives are to:
provide a more secure environment in which the M2006 Corporation can raise
sponsorship revenue;
minimise ambush marketing of M2006 Games sponsors; and
balance the interests of the M2006 Corporation with the commercial interests of third
parties.
Identification of Options
In response to the request by the Victorian Government to provide M2006 Games indicia
and images protection, three options for the Australian Government have been identified.
Option 1: No Legislative Action
The Australian Government would take no specific action and would rely on the market,
in conjunction with existing intellectual property legislation, to address the problem of
ambush marketing.
Option 2: Legislative Action with Exemptions
The proposed M2006 Games indicia protection legislation would provide certain limited
exemptions for some third parties from prohibitions against the use of M2006 Games
indicia and images. It would include some provisions expected to clarify the scope of the
legislation where the scope might otherwise be in doubt. It would also include a sunset
clause such that it would cease to have effect from 1 July 2006.
The proposed legislation would provide protection for a range of M2006 Games indicia
and images including the following expressions:
Melbourne 2006 Commonwealth Games;
Melbourne 2006 Games;
Melbourne Games;
Melbourne Commonwealth Games;
Melbourne 2006;
M2006;
M06;
Australian Commonwealth Games;
Commonwealth Games;
Friendly Games;
any other combination of the words "Commonwealth Games" or "Games" and the
numbers "2006", "18th", "Eighteenth" or "XVIIIth";
5
Australian Commonwealth Games Team when linked with expressions specific to the
Melbourne 2006 Commonwealth Games;
Commonwealth Games Cultural Program;
Melbourne 2006 Cultural Program;
M06 Cultural Program;
Queen's Baton Relay;
"bronze", "silver" or "gold" when linked with "Commonwealth Games" or
"Commonwealth Games Athlete"; and
any words, expressions or figures that are prescribed to be Commonwealth Games
references.
Exemptions would apply to:
parties providing information (including factual reporting by the media), criticism
and/or review, which did not fall within the meaning of `use for commercial
purposes'.
Option 3: Legislative Action with No Exemptions
The Australian Government could provide strict indicia protection legislation to the
M2006 Corporation in respect of certain indicia and images, without exemptions for any
third parties. The indicia and images protected would be the same as under option two.
Assessment of Impacts (Costs and Benefits) of Each Option
Impacted Group Identification
The same groups would be affected by the implementation of any one of the three options.
These groups are:
third parties, including but not limited to M2006 Games athletes, coaches and other
professionals associated with M2006 Games team members; sporting organisations
associated with M2006 Games team members; institutes of sport; businesses
providing goods or services for past, present and future Commonwealth Games; and
consumers purchasing goods or services associated with the M2006 Games;
the M2006 Corporation; and
the Australian Government.
The following qualitative analysis considers the impact of costs and benefits for the
identified groups for each of these three options.
Option 1: No Legislative Action
Costs
Third parties:
consumers may find it difficult to identify goods and services that are officially
authorised by the M2006 Corporation; and
6
M2006 Corporation sponsors would have limited protection from ambush marketing.
M2006 Corporation:
the M2006 Corporation may be vulnerable to ambush marketing;
the M2006 Corporation's ability to gain increased levels of sponsorship may be
constrained because it could not provide assurances to sponsors that they will not be
subject to ambush marketing; and
by narrowing the range of remedies to those contained in existing intellectual property
legislation, the M2006 Corporation would have difficulty replacing any loss of
revenue from ambush marketing activities.
Australian Government:
if the ability of the M2006 Corporation to raise non-government revenue was
constrained, there may be greater pressure on the Government to provide additional
financial assistance to the Victorian Government.
Benefits
Third parties:
subject to the limitations imposed by the current legal framework (Trade Marks Act
1995, Copyright Act 1968, Trade Practices Act 1974, Designs Act 1906 and
Commonwealth Games Arrangement Act 2001), third parties would be free to use
M2006 Games indicia and images to indicate their association or involvement with the
M2006 Corporation and the M2006 Games generally.
M2006 Corporation:
there would be no benefits to the M2006 Corporation in adopting this option.
Australian Government:
the Government would not need to dedicate time and human resources to the
legislative process.
Option 2: Legislative Action with Exemptions
Costs
Third parties:
third parties including M2006 Games athletes and coaches, sporting organisations and
institutes of sport associated with M2006 Games team members (and their third party
sponsors) would be restricted, to a certain extent, in their use of the M2006 Games
indicia and images. They would not be able to use the specified M2006 Games
expressions in ways that would suggest the existence of a sponsorship arrangement
with the M2006 Games without the authorisation of the M2006 Corporation or an
authorised user; and
third parties and their sponsors may become confused about increased regulatory
requirements.
7
M2006 Corporation:
the M2006 Corporation may incur additional costs, as it would be required to monitor
compliance of its authorised users; monitor advertising in the media for ambush
marketing of its sponsors; administer the register for the authorisation of insignia to
sponsors; and enforce any breaches; and
the M2006 Corporation may still face some level of ambush marketing as some
options may remain available to third parties to promote their own activities, including
their involvement with the Commonwealth Games movement, without using the
M2006 Games expressions.
Australian Government:
providing legislative protection to a particular organisation might increase the
likelihood of the Government receiving similar requests for legislative protection in
the future; and
the Government would need to dedicate time and human resources to the legislative
process.
Benefits
Third parties:
in accordance with the proposed exemptions, third parties would be able to use the
M2006 Games expressions to indicate or publicise their factual and historical
association or involvement with the Commonwealth Games. This would be subject to
the limitations imposed by the current legal framework (Trade Marks Act 1995,
Copyright Act 1968, Trade Practices Act 1974, and Designs Act 1906), and should
not convey the impression of an ongoing sponsorship for or by the M2006
Corporation if that is incorrect;
the providers of information (including factual reporting by the media), criticism
and/or review, would be free to use the M2006 Games expressions for legitimate non-
commercial purposes. The proposed M2006 Games indicia protection legislation
would not seek to restrict the news information flow within the public arena; and
there would be more certainty for consumers purchasing officially licensed M2006
Games goods and services.
M2006 Corporation:
the M2006 Corporation would be able to provide greater security for its sponsors by
protecting against ambush marketeers, giving it a greater capacity to maintain its
current sponsors and increase its sponsorship revenue over time; and
the M2006 Corporation would have access to an expanded range of remedies to assist
it in protecting its intellectual property. This is important given that the M2006
Games will be held in March 2006.
Australian Government:
there may be less risk that the Government will be asked to provide further financial
assistance to the M2006 Corporation due to the likely increased ability of the M2006
Corporation to raise revenue through sponsorship.
8
Option 3: Legislative Action with no Exemptions
Costs
Third parties:
legislation would be standardised and inflexible and would not deal with the diverse
conditions in which the M2006 Games expressions are used; and
all third parties would be prevented from using the M2006 Games expressions for
criticism, review and when making factual statements about their past involvement in,
or association with, the M2006 Corporation and the Commonwealth Games
movement or events.
M2006 Corporation:
the M2006 Corporation may incur additional costs, as it would be required to monitor
compliance of its authorised users; monitor advertising in the media for ambush
marketing of its sponsors; administer the register for authorisation of insignia to
sponsors; and enforce any breaches; and
the M2006 Corporation may still be vulnerable to some level of ambush marketing as
some options may remain available to third parties to promote their own activities,
including their involvement with the Commonwealth Games movement, without using
the M2006 Games expressions.
Australian Government:
the Government would not be providing balanced legislation as the rights of the
M2006 Corporation to protect against ambush marketing would outweigh the rights
of third parties to use M2006 Games expressions in a factual and historical context;
and
the Government would need to dedicate time and human resources to the legislative
process.
Benefits
Third parties:
sponsors of the M2006 Games would receive a higher level protection against ambush
marketing.
M2006 Corporation:
this option would provide the most comprehensive level of protection for the M2006
Corporation against ambush marketing of the three options;
this option would maximise the M2006 Corporation's ability to raise non-government
revenue; and
the M2006 Corporation would have certainty over the protection of its sponsors from
ambush marketing as provided by the legal sanctions.
Australian Government:
9
by minimising the risk of ambush marketing and thus maximising the M2006
Corporation's ability to raise sponsorship revenue, the likelihood of the Government
being asked to provide further financial assistance for the Commonwealth Games
would be reduced relative to Option 2.
Consultation
Consultation was undertaken on the issue of protection of M2006 Games indicia and
images with the following Australian Government departments and agencies:
Attorney-General's Department;
Australian Customs Service;
Australian Sports Commission;
Department of Communications, Information Technology and the Arts
(Creators' Rights and Access Branch);
Department of Finance and Administration;
Department of the Prime Minister and Cabinet;
IP Australia; and
The Treasury
Consultation was also undertaken on the issue of protection of M2006 Games indicia and
images with the following:
Victorian Office of Commonwealth Games Coordination;
Melbourne 2006 Commonwealth Games Corporation; and
Australian Commonwealth Games Association
Australian Government agencies
While all parties were supportive of the objectives of the proposed legislation, in the
course of discussions between Australian Government agencies with responsibility for
intellectual property issues the following points were made:
Constitutional Power
The Australian Government must be satisfied that any proposed legislation is supported by
a constitutional head of power before it is introduced to Parliament.
The Australian Government Solicitor confirmed the Australian Government has
constitutional power to enact the proposed legislation.
Complementarity of Victorian and Commonwealth Legislation
An important consideration for the Australian Government will be the complementarity of
any Commonwealth legislation with the Victorian Government's Commonwealth Games
10
Arrangements Act 2001 (CGA Act). The CGA Act establishes the framework for the
authorised use of M2006 Games expressions and for the imposition of penalties for
offences. It appears to be broader in its application than the Commonwealth legislation
enacted for the Sydney 2000 Olympic and Paralympic Games (S2000 Games).
The Australian Government would need to consider the potential for overlap between
Commonwealth and State legislation. It is worth noting that the New South Wales
Government did not enact specific legislation for the S2000 Games, but rather relied
exclusively on the Sydney 2000 Games (Indicia and Images) Protection Act 1996.
In contrast the Victorian Government has enacted its own legislation for the
M2006 Games.
The proposed M2006 Games indicia protection legislation has been drafted in a manner
that complements the CGA Act.
Third parties
While the Australian Government did not undertake a formal consultation process
regarding the impact on affected third parties, it circulated the proposal to all relevant
Australian Government agencies on 4 February 2005. Through this mechanism agencies
provided comments in relation to the impact on affected third parties.
Conclusion and Recommended Option
Option two is the recommended option as it strikes the most appropriate balance between
the interests of the M2006 Corporation and any affected third parties.
The clarifying provisions and exemptions would define the acceptable use of M2006
Games indicia and images, decreasing any confusion that might otherwise occur.
Third parties covered by the exemptions and clarifying provisions would be able to use the
M2006 Games indicia and images for criticism and review and for the purposes of
providing information without needing to obtain authorisation from the M2006
Corporation, and as such would not be unreasonably constrained by the proposed
protection. However, third parties not covered by the exemptions and clarifying
provisions would not be able to use M2006 Games indicia and images without first
obtaining authorisation from the M2006 Corporation.
The costs to the M2006 Corporation of allowing the limited group of third parties to use
the M2006 Games expressions for criticism or review and to provide information without
its authorisation is clearly outweighed by the benefits to those parties.
The M2006 Corporation would still derive significant benefit through a greater ability to
raise sponsorship revenue.
Implementation and Review
11
The proposal would be implemented when the proposed M2006 Games indicia protection
legislation receives Royal Assent. An evaluation of its effectiveness and impacts would be
undertaken immediately after the expiration of the Act which ceases to have effect from
1 July 2006.
Summary Regulation Impact Statement for the Melbourne 2006 Commonwealth
Games (Indicia and Images) Protection Bill
The proposed M2006 Games indicia protection legislation is expected to have a positive
impact on business and no significant impact on families.
The key areas of the impact are:
the M2006 Corporation will have a greater capacity to raise sponsorship revenue;
Sponsors of the M2006 Corporation will have legislative protection against ambush
marketing;
non-sponsors of the M2006 Corporation will have a very limited capacity to associate
themselves with the Commonwealth Games movement;
third parties covered by the exemptions and clarifying provisions will be able to use the
M2006 Games indicia and images for criticism or review and for the purposes of
providing information;
the M2006 Corporation will receive indicia and images protection legislation
consistent with that afforded to SOCOG and SPOC under the Sydney 2000 Games
(Indicia and Images) Protection Act 1996 as amended; and
the proposed M2006 Games indicia protection legislation would include a sunset
clause and cease to have effect from 1 July 2006.
12
ABBREVIATIONS
The following abbreviations are used in this explanatory memorandum:
ACGA Australian Commonwealth Games Association
Bill Melbourne 2006 Commonwealth Games (Indicia and
Images) Protection Bill 2005
CGF Commonwealth Games Federation
Corporation Melbourne 2006 Commonwealth Games Corporation
Customs Australian Customs Service
Melbourne Games Melbourne 2006 Commonwealth Games
13
NOTES ON CLAUSES
PART 1 - PRELIMINARY
Clause 1 - Short Title
This clause provides that the Bill, when enacted, may be cited as the Melbourne 2006
Commonwealth Games (Indicia and Images) Protection Act 2005.
Clause 2 - Commencement
This clause provides that the Act will commence on the day it receives the Royal Assent.
Clause 3 - Objects of Act
This clause sets out the objects of the Bill. The Bill is intended to protect Australia's
position as a participant in and supporter of the Commonwealth of Nations in relation to
the holding of the Melbourne Games.
The Bill is also intended to help protect the relations of, and ensure performance of the
obligations of, Melbourne Games bodies and the Victorian Government with the
Commonwealth of Nations.
These objects are to be achieved through regulation of the use for commercial purposes of
Melbourne Games indicia and/or images, which will facilitate the raising of revenue in
relation to the Games.
Clause 4 - Act binds the Crown
This clause provides that the Act will bind the Crown in all its capacities.
Clause 5 - Application of Act
This clause sets out the application of the Bill, which extends to Norfolk Island, the
Territory of Christmas Island and the Territory of Cocos (Keeling) Islands.
Clause 6 - Additional operation of Act
This clause sets out the additional operation of the Bill. It extends the operation of the
Bill, to the extent it is possible to do so, by invoking certain Commonwealth constitutional
heads of power.
14
PART 2 - DEFINITIONS AND OTHER INTERPRETATION PROVISIONS
Clause 7 - Definitions and other interpretation provisions
Clause 7 defines certain words and phrases that are used in the Bill. It also confirms that
the Act will apply to Melbourne 2006 Commonwealth Games indicia that are represented
in a language other than English, and confirms that the use of "indicia" and "images" for
the purposes of the proposed legislation are not intended to express a contrary intention
for the purposes of section 23 of the Acts Interpretation Act 1901.
Some of the more significant definitions include:
"authorised user", which is broadly defined through reference to section 56D of
the Commonwealth Games Arrangements Act 2001 (Vic), but which also
specifically includes the ACGA and the CGF. Section 56D of the Commonwealth
Games Arrangements Act 2001 (Vic) provides the Corporation with power to
authorise people to use Games related indicia or images (within the meaning of
that Act). The Bill provides that a person authorised to use Melbourne Games
indicia or images under section 56D is an "authorised user" for the purposes of the
Bill;
"Melbourne 2006 Commonwealth Games images", which does not refer to a
prescribed list of images, but rather incorporates the broader meaning of any visual
or aural representations that, to a reasonable person in the circumstances of the
presentation, would suggest a connection with the Melbourne 2006
Commonwealth Games; and
"Melbourne 2006 Commonwealth Games indicia", which is defined in subclause
7(2) through reference to a prescribed list of words and phrases. Paragraphs
7(2)(a) and 7(2)(b) prescribe individual words and phrases that, by themselves, fall
within the definition. In contrast, paragraph 7(2)(c) sets out two lists of indicium,
and provides that the definition of "Melbourne 2006 Commonwealth Games
indicia" includes any combination of an indicium in an item in List A with an
indicium in that item in List B.
Clause 8 - Application of Melbourne 2006 Commonwealth Games indicia and
images
This clause describes ways in which Melbourne 2006 Commonwealth Games indicia or
images could be "applied to" goods or services. The clause is not intended to exclude the
general meaning of the term "applied".
Four specific examples are set out, which are where Melbourne Games indicia or images
are:
woven in, impressed on, worked into, affixed or annexed to the goods; or
15
applied to any covering, document, label, reel or thing in or with which the goods
are intended to be "dealt with or provided in the course of trade" (this reference
has been included to make clear that Customs will not seize such goods that have
had indicia or images applied to them for personal use); or
used on a signboard or in an advertisement that promotes the goods or services; or
used in an invoice, price list, catalogue, brochure, business letter, business paper or
other commercial document that relates to the goods or services.
All four of the above examples apply in the case of goods, but only the bottom two
examples apply in the case of services.
Subclause 8(2) refers to Division 2 ("Importation of goods") and Division 3 ("Remedies")
of Part 4. It states that, for the purposes of those Divisions, Melbourne Games indicia or
images are "applied" to goods by a person if the goods (which already have indicia or
images applied to them) are imported into Australia for the purpose of sale or distribution
by the person.
Subclause 8(3) clarifies the meaning of "covering" and "label" as used in subparagraph
8(1)(a)(ii).
Clause 9 - Meaning of commercial purposes
This clause explains what it means to use indicia or images for commercial purposes in the
context of the Bill, and sets out the two general situations in which a person will be said to
have done so.
The first situation is where a person (the first person) causes indicia or images to be
applied to their goods or services. The application will constitute use for commercial
purposes where the application:
is for the primary purpose of advertising or promotion or enhancing the demand
for the goods or services; and
would suggest to a reasonable person that the person is or was a sponsor of the
Melbourne Games or an event arranged by a Melbourne Games body in connection
with the Games.
The second situation may apply where a second person deals in particular ways with the
goods or services described in the situation above. Where these circumstances exist in
relation to the first person, then a second person will be taken to have used the
indicia/images for commercial purposes if they:
supply or offer to supply the goods or services; or
expose the goods (not services) for supply by themselves; or
keep the goods (not services) for supply by themselves or by another person.
The second situation will not apply where the first person is the Corporation or an
authorised user, as these parties are excluded under paragraph 9(3)(a). The rationale
16
behind this is that where the first person is properly authorised to use the relevant indicia
or images for commercial purposes, it should not be necessary for a second person, such
as a retailer or distributor, to independently obtain their own authorisation to deal with the
goods or services.
The meaning of "supply" for the purposes of the section is set out in subclause 9(4).
Clause 10 - Presumption relating to advertising or promotion etc
This clause sets out a presumption relating to paragraphs 9(2)(c) and (3)(c) and informs
the interpretation to be given to those paragraphs. The clause provides that the
application of Melbourne Games indicia or images for the primary purpose of advertising,
promotion or enhancing the demand for the goods or services, is prima facie sufficient to
suggest:
a sponsorship; or
the provision of other support
for the purposes of paragraphs 9(2)(c) or (3)(c).
Clause 9 sets out the two situations in which a person uses Melbourne Games indicia or
images for commercial purposes. Paragraph 9(2)(c) sets out that to establish use for
commercial purposes it is necessary that the application of Melbourne Games indicia or
images would suggest, to a reasonable person, that the person who caused the application
is or was a sponsor or provider of other support of the Melbourne Games (or an event
arranged by a Melbourne Games body in connection with the Games). Paragraph 3(c) sets
out the same test in relation to the second example.
The presumption set out in clause 10 is intended to be rebuttable. It is intended to prevent
a non-authorised user from using Melbourne Games indicia or images for the primary
purpose of advertising, promotion or enhancing demand, but circumventing the intent of
the legislation by including some type of disclaimer (that they are not a sponsor of the
Games).
Clause 11 - Criticism, review and provision of information
This clause clarifies the meaning to be given to the use of Melbourne 2006
Commonwealth Games indicia or images.
Use of indicia or images for the primary purpose of criticism, review, or the provision of
information, is not alone sufficient to suggest a sponsorship or the provision of support for
the purposes of paragraphs 9(2)(c) or (3)(c).
Subclause 11(2) provides a non exhaustive list of examples of criticism or review, and
examples of provision of information, for the purposes of subclause 11(1).
17
PART 3 - PROTECTION
Clause 12 - Regulation of use of Melbourne 2006 Commonwealth Games indicia
and images
This clause establishes who would be permitted under the proposed legislation to use
Melbourne 2006 Commonwealth Games indicia and images for commercial purposes.
Use for commercial purposes would be restricted to the Corporation and to authorised
users (who, other than the ACGA or CGF, would only be able to use the indicia or images
in accordance with the authorisation).
Subclause 12(4) deems that the use of an indicium that so closely resembles a Melbourne
Games indicium that a reasonable person is likely to mistake it as such shall be taken for
the purposes of subclause 12(1) to be use of that Melbourne Games indicium.
Clause 13 - Persons involved in contravening section 12
This clause broadens the application of section 12 so that it will include people who are
indirectly involved in a contravention of section 12. It sets out a number of instances
where a person will be taken to have contravened section 12, being where that person:
attempts to contravene section 12;
aids, abets, counsels or procures a person to contravene section 12;
induces or attempts to induce a person to contravene section 12;
is in any way knowingly concerned in, or party to, a contravention of section 12;
or
conspires to contravene section 12.
PART 4 - IMPORTATION OF GOODS, REMEDIES AND GROUNDLESS
THREATS
Division 1 - Standing of authorised users to give notices and pursue remedies
Clause 14 - Consent of Corporation to giving of notices etc
This clause provides that the written consent of the Corporation is required before a
person may:
give a notice of objection to importation under section 20; or
make an application for an injunction under section 31; or
bring an action for damages or an account of profits under section 34.
Clause 15 - Request for consent
This clause provides that if an authorised user (as defined in clause 7) gives the
Corporation a written request for consent under section 14, and the Corporation does not
18
give consent or refuse to consent before the end of the third working day following the
day on which the request was given, then the Corporation will be taken to have provided
consent.
This clause is intended to provide authorised users with clarity, within an acceptable
timeframe, as to their rights under the Act.
Due to the operation of subclause 34(4), this deeming provision would be ineffective if the
request were to be given later than four days before the last working day before the
cessation of the Act.
Clause 16 - Consent must not be unreasonable refused
This section provides that the Corporation's consent under section 14 must not be
unreasonably refused.
Division 2 - Importation of goods
Clause 17 - Determinations about owners of goods
This clause provides a mechanism by which the Customs CEO or an officer of Customs
(within the meaning of subsection 4(1) of the Customs Act 1901) may determine a person
to be the owner of goods for the purposes of paragraph (b) of the definition of
"designated owner" set out in clause 7 of the Bill.
The CEO or officer of Customs will only be able to make such a determination where the
person is an owner (within the meaning of subsection 4(1) of the Customs Act 1901) of
the goods. The term "owner" has two meanings in subsection 4(1). In respect of goods it
includes:
"any person (other than an officer of Customs) being or holding himself out to be
the owner, importer, exporter, consignee, agent, or person possessed of, or
beneficially interested in, or having any control of, or power of disposition over the
goods".
In respect of a ship or aircraft it includes:
"a charterer of the ship or aircraft or a slot charterer or freight forwarder
responsible for the transportation of goods on the ship or aircraft".
Clause 18 - Copy of register to be supplied by the Corporation to the Customs CEO
This clause is intended to ensure that Customs receives sufficiently detailed information
about the register, and amendments to the register, within an acceptable timeframe. The
register referred to is that maintained under section 56J of the Commonwealth Games
19
Arrangements Act 2001 (Vic), which lists authorisations that are given by the
Corporation (ie authorisations to use Melbourne Games indicia and images) and certain
information relating to each authorisation.
To ensure that Customs has sufficient information to administer the Bill, clause 18(1)
provides that the Corporation must give the Customs CEO a copy of the register as soon
as practicable after the commencement of clause 18. Subclause 18(2) provides that the
Corporation must give the Customs CEO a copy of any entry, or note in an entry,
subsequently made in the register. This must be done as soon as practicable after the entry
or note is made.
A copy of the register, entry or note must be given to the Customs CEO by electronic
means.
Clause 19 - Notice to Customs CEO of imports by the Corporation, the ACGA or
the CGF
This clause is designed to avoid unnecessary delay in the importation of goods by (or for)
the Corporation and/or authorised users, by ensuring that the Customs CEO has advance
knowledge of such importation.
The clause provides that where goods with Melbourne Games indicia or images applied to
them are proposed to be imported by or for the Corporation, the ACGA, or the CGF, then
the Corporation, ACGA or CGF (as the case requires) must provide a written notice to
the Customs CEO specifying the indicia or images so applied. The notice must contain
sufficient detail to allow the CEO to identify the goods.
Clause 20 - Notice of objection to importation
This clause provides that the Corporation or an authorised user may give the Customs
CEO a written notice objecting to the importation of goods that have Melbourne 2006
Games indicia or images applied to them, where the designated owner of the goods is not
authorised under the Act to use the goods for commercial purposes. Such a notice must
be given prior to the day of the importation.
An authorised user, other than the ACGA or CGF, will only be entitled to give a notice in
relation to particular Melbourne Games indicia or images that the user is in fact authorised
to use under section 56D of the Commonwealth Games Arrangements Act 2001 (Vic).
The ACGA and CGF are excluded here because their authorisation will not be limited to
particular indicia or images.
A notice under this clause will cease to have effect either when one of the following
occurs:
it is revoked via written notice from the objector to the Customs CEO;
the Act ceases to have effect; or
20
when an authorisation ceases to be in force (for an authorised user other than the
ACGA or the CGF).
For the purposes of clause 20, a reference to the use of indicia or images for commercial
purposes does not include a reference to use covered by subclause 9(3).
Clause 21 - Customs CEO may seize goods
This clause provides for the seizure of certain goods by the Customs CEO. The goods
must be manufactured outside Australia, imported into Australia, subject to the control of
Customs, and have had Melbourne Games indicia or images applied to them.
The clause provides for the seizure of such goods where there is a notice of objection in
force and it appears that the designated owner is not authorised for the purposes of the
Act to use the indicia or images in relation to the goods. In these circumstances the
Customs CEO must seize the goods, unless he or she has reasonable grounds for believing
that the use of the indicia or images would not breach clause 12. If the objector has not
given sufficient security to reimburse the Commonwealth for reasonable expenses incurred
in the seizure of goods, then the CEO has the discretion to seize the goods and is not
required to do so (see subclause 21(4) and clause 28).
Any goods that are seized under this section must be kept in a secure place.
For the purposes of clause 21, a reference to the use of indicia or images for commercial
purposes does not include a reference to use covered by subclause 9(3), which sets out the
example of use for commercial purposes by a second person.
Clause 22 - Notice of seizure
This clause requires that where goods are seized under clause 21 the Customs CEO must
notify the designated owner of goods, and each objector, of the seizure. The notice must:
be in writing;
identify the goods;
state that they have been seized; and
be given as soon as practicable after the seizure.
Some additional requirements apply to notices given to objectors, which must give the full
name and address of the designated owner of the goods and any information that is
reasonably likely to help the objector to identify the designated owner. Such notices must
also state that the goods will be released to the designated owner unless the objector, or
one of the objectors, makes an application for an injunction under section 31 and provides
the Customs CEO with written notice of the application within ten working days from the
date specified in the notice of seizure (or within such further period, not exceeding ten
working days as the CEO allows).
21
Subclause 22(7) states that a notice given under subsection (1) (which includes notices
given to both owners and objectors) are not legislative instruments. This subclause is
included to assist readers, and to make clear that the notices are not legislative instruments
within the meaning of section 5 of the Legislative Instruments Act 2003.
Clause 23 - Forfeiture of goods - by consent
This clause provides that the designated owner of goods may, at any time before an
objector makes an application for an injunction under clause 31, consent to the goods
being forfeited to the Commonwealth.
Such consent must be given through written notice to the Customs CEO. Once such
consent is given, the goods must be disposed of as the CEO directs.
Clause 24 - Release of goods - no application for injunction
This clause provides for the release of seized goods to their designated owner in certain
circumstances.
The Customs CEO must release goods if an objector consents, by written notice to the
CEO, at any time before the end of the application period.
The CEO has the discretion to release the goods to their designated owner at any time
before the end of the application period if information has come to light, after the goods
were seized, and the CEO does not have reasonable grounds for believing that clause 12
would be contravened by the importation.
Subclause 24(3) provides that the CEO must release the goods if, at any time before the
end of the application period, there is no notice of objection to importation under clause
20 in force, and no objector has applied for an injunction under clause 31. There would be
no notice of objection in force in relation to the goods if the notice had ceased to have
effect (see clause 20(6)).
If, at the end of the application period, no one has applied for an injunction under clause
31, then the CEO must release any seized goods not forfeited to the Commonwealth.
Clause 25 - Application for injunction - additional parties, relief etc
This clause sets out different action that may be taken by a prescribed court, in the event
that an objector in relation to seized goods makes an application for an injunction under
clause 31. The list of prescribed courts is set out in clause 38.
Persons demonstrating sufficient interest in the proceedings may be joined as respondents.
A prescribed court may order that seized goods be released to their designated owner
(with or without conditions), or that they be forfeited to the Commonwealth.
22
If the court decides that an injunction should not be granted, it may order that the objector
compensate the designated owner or other respondent for loss or damage attributable to
the period on or after the day the objector made the application for the injunction.
The clause sets a 3 week time limit within which a prescribed court may order that the
goods not be released, otherwise the Customs CEO must release the goods to their
designated owner.
Clause 26 - Disposal of goods ordered to be forfeited
This clause provides that any goods that are forfeited to the Commonwealth by a court
order are to be disposed of as the Customs CEO directs.
Clause 27 - Power of Customs CEO to retain control of goods
This clause prohibits the Customs CEO from releasing or disposing of seized goods, or
taking action to give effect to a court order under clause 25, if the CEO is required or
allowed to retain control of the goods under any other law of the Commonwealth.
Clause 28 - Insufficient security
This clause provides that if the security given under subsection 21(4) by an objector to the
importation of goods is not sufficient to meet the expenses incurred by the Commonwealth
as a result of action taken by the Customs CEO under Division 2 of Part 4, then the
objector(s) must repay the difference between the expenses incurred and the security
given. For the sake of clarity, subclause 21(4) provides that the Customs CEO is not
required to seize goods if the objector has not given security that the CEO considers
sufficient to reimburse the Commonwealth for reasonable expenses that may be incurred if
the goods were seized.
Clause 28 recognises the possibility that an objector might give security that the Customs
CEO considers sufficient at the time, but which later proves to be insufficient in light of
expenses actually incurred as a result of the CEO's actions. Under paragraph 28(2)(b),
the Commonwealth could take action in any court of competent jurisdiction to recover the
debt.
Clause 29 - Commonwealth not liable for loss etc suffered because of seizure
This clause excludes the Commonwealth from liability for any loss or damage resulting
from the Customs CEO's seizure or failure to seize goods, or from the release or disposal
of any seized goods.
Clause 30 - Modification in relation to Norfolk Island etc
23
This clause provides that the application to Norfolk Island, the Territory of Christmas
Island or the Territory of Cocos (Keeling) Islands of Division 2 of Part 4 of the Bill may
be modified or adapted by regulation. This is intended to recognise that these territories
have their own customs regimes which are best placed to administer the importation
provisions of this Division.
Division 3 - Remedies
Clause 31 - Injunctions
This clause provides for a prescribed court to grant an injunction, in certain circumstances,
to restrain a person from engaging in conduct that contravenes clause 12.
Such an injunction may only be granted on the application of the Corporation or an
authorised user. An injunction granted on the application of a person who is an authorised
user, other than the ACGA or CGF, may only relate to the indicia or images to which the
person's authorisation relates (the ACGA and CGF are excluded because their
authorisation will not be limited).
In this context, use of an indicium sufficiently close to a relevant Melbourne Games
indicium is taken to be use of that Melbourne Games indicium.
Clause 32 - Interim injunctions
This clause provides that a prescribed court may grant an interim injunction pending the
determination of an application for injunction under clause 31, and that a contravention of
clause 12 is to be taken to have caused immediate and irreparable damage to the applicant.
The latter point is intended to guide a court in the exercise of its discretion under this
section.
Clause 33 - Corrective advertisements
This clause provides that a court, upon the application of the Corporation, may make an
order requiring a person to publish a corrective advertisement (at that person's expense) if
the court is satisfied that the person has contravened clause 12. The order must specify
the means and times of the corrective advertisement.
Clause 34 - Damages or accounts of profit
This clause provides that the Corporation or an authorised user may seek damages or an
account of profits to cover loss or damage caused by a person acting in contravention of
clause 12, provided that the action is brought within three years of the contravention.
24
In the case of an authorised user, the relevant consent under clause 14 must not be sought
later than the working day preceding the last working day before the proposed Act will
cease to have effect.
Subclause 34(6) states that a plaintiff may not bring an action against a person under this
clause in relation to the use of Melbourne Games indicia or images if the plaintiff has
already brought an action against the person under section 56S or 56T of the
Commonwealth Games Arrangements Act 2001 of Victoria in relation to that use.
Subclause 34(7) is a similar provision designed to prevent a plaintiff from continuing an
action against a person under clause 34 if they bring an action against the person under
section 56S or 56T of the Victorian Act. Subclauses 34(6) and (7) are intended to reduce
the likelihood of a plaintiff double dipping by seeking damages or an account of profits
under both the Commonwealth and Victorian legislation.
Clause 35 - Other remedies
This clause provides that remedies under other Commonwealth, State or Territory laws
are not excluded by this Division. This is subject to subclauses 34(6) and (7), which
prevent a person commencing or continuing and action seeking damages or an account of
profits under clause 34 if they have previously commenced, or commence, an action
against the person under section 56S or 56T of the Commonwealth Games Arrangements
Act 2001 of Victoria.
Division 4 - Groundless threats
Clause 36 - Groundless threats of legal proceedings
This clause is designed to provide a safeguard against groundless threats of legal
proceedings. It provides that if the Corporation or an authorised user threatens to make
an application or bring an action against a person on certain grounds relating to
contravention of clause 12, any person aggrieved by the threat may bring an action against
the Corporation or authorised user.
A court may, in such an action, declare that the Corporation or authorised user had no
grounds for making the threat, and grant an injunction restraining the party from
continuing to make the threat. The court may also award damages to the aggrieved
person for losses suffered as a result of the threat.
If the person making the threat has in fact made an application or brought an action under
Division 3 against a threatened person, the threatened person may not bring or continue an
action under this clause.
Subclause 36(6) provides a defence to an action under this clause if the conduct of the
threatened person (to which the threat relates) does in fact contravene clause 12 (ie it
25
constitutes unauthorised use of Melbourne Games indicia or images for commercial
purposes).
Clause 37 - Counterclaim in action on groundless threats
This clause provides that if a threatened person brings an action under clause 36, and the
Corporation or an authorised user would be entitled to make an application or bring an
action against a person for contravening clause 12, then the Corporation or an authorised
user may make a counterclaim for any relief that may be available under Division 3 of Part
4.
Subclause 37(2) provides that the provisions of Divisions 1, 2 and 3 of Part 4 of the
proposed Act will apply as if a counterclaim was an application or action made or brought
under Division 3.
Part 5 - Jurisdiction and proceedings of prescribed courts
Clause 38 - Prescribed courts
This clause declares a number of courts to be prescribed courts for the purposes of the
proposed Act. They are the Federal Court, the Federal Magistrates Court and the
Supreme Courts of a State, the Australian Capital Territory, the Northern Territory and
Norfolk Island.
The Bill does not provide for merits review in the Administrative Appeals Tribunal. This
reflects the position under the Commonwealth Games Arrangements Act 2001 of
Victoria and the former position under the Sydney 2000 Games (Indicia and Images)
Protection Act 1996. Such review might have been provided in the Bill in relation to
certain administrative decisions of the Customs CEO, for example, but was not considered
appropriate in this case.
The reason for this is that the main purpose of the Bill is the protection of the commercial
and intellectual property rights of the Corporation which is a Victorian statutory entity.
Any involvement with and decisions of Customs simply flow as a consequence of that
purpose. As the rights to the indicia and images currently vest in the Corporation, it
would be inappropriate for the Corporation's commercial decisions in relation to its own
intellectual property to be `second guessed' under merits review. In most instances those
decisions will be based on negotiations with persons seeking authorisation to use the
Melbourne Games indicia and images or on the management of those authorisations.
Even if such review was in fact appropriate, it is considered that the appropriate forum
would be a Victorian court or tribunal.
Clause 39 - Jurisdiction of Federal Court and Federal Magistrates Court
26
This clause confers original jurisdiction on the Federal Court and the Federal Magistrates
Court in respect of all matters arising under the proposed Act.
Clause 40 - Jurisdiction of other prescribed courts
This clause confers federal jurisdiction on prescribed courts other than the Federal Court
or the Federal Magistrates Court, with the qualification that the jurisdiction conferred on
the Supreme Court of a Territory is only conferred to the extent permitted by the
Constitution.
Clause 41 - Transfer of proceedings
This provision would operate to enable an application or action to be transferred from one
prescribed court to another (by court order of the first prescribed court).
Part 6 - Miscellaneous
Clause 42 - Requirements for the Register
This clause sets out certain information that must be kept on the register maintained by the
Corporation under section 56J of the Commonwealth Games Arrangements Act 2001
(Vic). In relation to authorised users (other than the ACGA or CGF) an entry on the
register must state whether the authorisation applies generally or in specified
circumstances and whether it authorises use of all, or merely specified kinds, of indicia or
images.
This clause is intended to ensure that the public is provided with sufficient information to
make informed purchasing decisions in relation to goods or services which have had
Melbourne Games indicia applied to them.
Clause 43 - Trade mark and design rights
This clause provides that the proposed Act is not intended to affect the operation of the
Trade Marks Act 1995 or the Designs Act 2003, including any rights conferred or
liabilities imposed by or under those Acts.
Clause 44 - Concurrent operation of State and Territory laws
This clause provides that the Parliament intends that the Act would not apply to the
exclusion of a State or Territory law to the extent that the law is capable of operating
concurrently with the proposed Act.
Clause 45 - Avoiding direct inconsistency between this Act and the Commonwealth
Games Arrangements Act 2001 of Victoria
27
This clause is intended to address any inconsistency that might otherwise arise between the
Bill and sections 56B, 56C, 56E, 56F and/or 56K of the Commonwealth Games
Arrangements Act 2001 (Vic). In particular, it is intended to prevent direct inconsistency
for the purposes of section 109 of the Constitution.
The clause provides that where a person is authorised under one of the aforementioned
provisions to use (or is not prevented from using) Melbourne Games indicia or images for
commercial purposes, then the Bill does not:
prohibit a person's use of the indicia or images; or
impose a liability in respect of such use.
Clause 46 - Compensation for acquisition of property
This clause provides that if the operation of the Act would result in an acquisition of
property otherwise than on just terms, and a person has not been compensated, then the
Commonwealth is liable to pay a reasonable amount of compensation to the person.
If the Commonwealth and the person do not agree on the amount of such compensation,
then the person may institute proceedings in a court of competent jurisdiction for such
reasonable compensation as the court determines.
Clause 47 - Cessation of operation of Act
This clause provides that the proposed Act will cease to have effect at the end of 30 June
2006, unless it is repealed earlier. This date anticipates that the Bill will operate for
several months following the conclusion of the Melbourne Games.
Clause 48 - Regulations
This clause provides that the Governor General may make regulations prescribing matters
required or permitted by the proposed Act to be prescribed, or matters necessary or
convenient to be prescribed for carrying out or giving effect to the Act.