TfL claimed they were removed after receiving complaints from UEFA, via The FA, that the advertising amounted to passing off and ambush marketing (Puma were not official event sponsors). UEFA and The FA denied making such allegations, so Puma applied for a Norwich Pharmacal order asking TfL to disclose who asked for the adverts to be taken down.
The court granted the relief on the basis that Puma had a good arguable case that the party who caused the advertising to be removed had made an unjustified threat of passing off. TfL clearly had the information Puma needed and would likely walk away empty handed unless the court intervened to break the deadlock.
The case illustrates the application of the Norwich Pharmacal thresholds, what’s arguably more interesting is what happens next. If Puma sues the party that asked for the adverts to be removed what impact will that have on ambush marketing and the ability of interested parties to control advertising in areas surrounding sporting events?
What are the practical implications of this case?
The case sets out a helpful reminder of the four conditions for Norwich Pharmacal relief. Namely the Arguable Wrong Condition, the Mixed Up In Condition, the Possession Condition and the Overall Justice Condition.
On the Arguable Wrong Condition, Puma argued it had a good arguable case against the party who caused the removal of its advertising under (i) unjustified threat of trade mark infringement, (ii) unjustified threat of passing off and/or (iii) interference with trade by unlawful means. Only ground (ii) was successful.
The relevant marks were two variations of the words “UEFA Women’s Euro”. Puma’s adverts showed photographs of women players sponsored by Puma wearing branded clothing with the taglines “Faster Football” and “Our Time”. UEFA’s marks were not used. That lies at the heart of ambush marketing; where parties who are not official sponsors seek to associate themselves with an event, often employing inventive advertising strategies to do so. Having not used UEFA’s marks, Puma could not plead that they’d been threatened with infringement of the trade marks. This illustrates the gaps in the law around ambush marketing. Traditional intellectual property legislation may not be flexible enough to deal with the competing interests of brand protection versus commercial opportunities.
What was the background?
The final of the European Women’s Football Championship 2022 was held in Wembley Stadium on 31 July 2022. Approaching the final, Puma secured advertising space in Wembley Park Tube Station through an agreement between its marketing agents and Global Media Group Limited (Global). The advertising was due to remain in place until 1 August 2022.
Puma was not an official sponsor of the Euros. Their adverts showed female football players wearing Puma sportswear. Three days before the final TfL removed the adverts and told Global they were taken down due to complaints by UEFA and The FA. Both denied involvement. Puma wasn’t satisfied with The FA’s response and pushed for more details. The FA said it was not aware of anyone contacting TfL and was not prepared to allow Puma’s “baseless fishing expedition to continue any longer”.
Norwich Pharmacal orders cannot be used as a fishing expedition to establish whether the claimant has a good arguable case or not. Being an equitable remedy they must be for focussed disclosure of necessary information. In other words, the documents and information sought must be necessary to enable the applicant to identify the wrongdoer. Of course Puma argued without disclosure of such information from TfL, it could never identify who asked them to remove its advertising.
What did the court decide?
HHJ Hacon held this was not a fishing expedition “It is hard to believe that TfL does not know who complained to it. Puma is not fishing on the chance that TfL may have the information. The fish is there. The question is whether it should be disclosed.” Ultimately it was held it should be. Puma had exhausted all reasonable options to obtain this information including further correspondence with The FA and a freedom of information request.
The court recognised that “Communication … has now reached a stage whereby Puma will very likely be obliged to walk away empty handed from its objection to the removal of its advertising unless the court intervenes to break the deadlock, allowing Puma to find out who complained to TfL.”
The relevant conditions for Norwich Pharmacal relief had been satisfied. Puma had a good arguable case that they’d been threatened with passing off. If either The FA or UEFA had grounds to object to the advertising, it was based on an alleged false representation that the public would wrongly believe that Puma was an official sponsor of Euro 2022, or otherwise associated with the event. It will be interesting to see how this point bears out if Puma takes further action against the party that caused the removal of the advertising. Did Puma’s use of images of women football players wearing branded clothing in advertising displayed in Wembley Tube Station amount to passing off? Does this amount to a misrepresentation that Puma was an official sponsor of Euro 2022?
Finally, on a procedural point the IPEC confirmed that, as a specialist list of the High Court, the court has jurisdiction to hear Part 8 claims such as for Norwich Pharmacal relief.
This article was first published by LexisNexis on 22 June.
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