Puma recently won against Transport for London (TfL) in the IPEC regarding the removal of advertising from Wembley Park Tube Station in July 2022, during the Euro 2022 football tournament.
The advertising comprised photographs of female footballers who are sponsored by Puma but it made no express reference to the Euro 2022 tournament as Puma was not a sponsor.
Ambush marketing
The advertising was removed on 28 July 2022 on the instructions of TfL, which operates the tube station. Puma understood from its advertising agency that the removal followed a complaint to TfL from UEFA via the FA that the advertising amounted to ambush marketing or passing off.
Puma contacted both UEFA and the FA, and also filed a freedom of information request with TfL. UEFA denied making any threats against TfL. The FA’s response did not address all the questions Puma raised, but it did say that, following an “initial internal review”, it was not aware of anyone from the FA contacting TfL on this issue. TfL resisted the freedom of information request, on the ground that the information was private.
Puma therefore sought a Norwich Pharmacal order requiring TfL to disclose the relevant documents relating to the removal of the advertising and a witness statement identifying the source of the complaint.
Norwich Pharmacal conditions
His Honour Judge Hacon agreed to grant the order requested. He said that Puma had to show there was an arguable wrong, that TfL was mixed up, that it must be likely to be able to provide the necessary information and that disclosure must be appropriate and proportionate.
The judge found that there was an arguable case that there was a legally recognised wrong, saying: “It seems to me that on the facts as they are known, there is a good, arguable case that the party complaining to TfL alleged to TfL that Puma's advertising was unlawful because it was passing off.” However, there was no unjustified threat of trade mark proceedings and no good, arguable case of unlawful interference with trade by unlawful means.
It was not disputed that TfL was sufficiently involved in the removal of the advertising to satisfy the ‘mixed up’ condition.
On the third condition, HHJ Hacon found that Puma had exhausted all reasonable avenues to obtain the documents:
“Communication between Puma and the other parties 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.”
Finally, he said that the order satisfied the overall justice condition. In particular, he said Puma’s request was not merely a fishing expedition: “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.”
As TfL held the information, and there was no prejudice to it from disclosing the information, it was ordered to do so.
What does this mean?
With the Women’s World Cup currently taking place in Australia, Euro 2022 seems like a long time ago! But this case shows that issues around alleged ambush marketing and passing off can linger long after the relevant sporting event has finished, and that the consequences of decisions taken in the heat of the moment may be serious.
Whatever the final outcome of this case, this judgment provides useful guidance on when Norwich Pharmacal orders may be granted in cases involving IP rights. In particular, it is notable that the judge felt that Puma had been frustrated in its attempts to obtain the relevant information through negotiation.
Any parties seeking, or being asked to provide, similar information should take note and ensure that responses are clear and robust. Please contact us if you require advice on how to handle such issues when they arise.
To find out more about the issues raised in this blog contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - rosie.burbidge@gunnercooke.com