By Kathryn Purcell-Hennessy
First four runners in the 2012 Melbourne Cup. Credit: Ian Currie
Horse racing in Australia is big business. The Melbourne Cup (the “race that stops the nation”) is one of the richest horse-racing events in the world, and up to AUD$781.7 million is expected to have been spent by the public on the big day this year. Recent amendments to the Australian Rules of Racing (Rules), however, restrict the ability of horse owners to exploit the intellectual property associated with their horses. The Australian Racing Board (ARB) ratified the proposed amendments, inserting a new Article 18A into the Rules which came into effect from 1 October 2012.
Further, Article 18A(1)(d) of the Rules requires the owners to agree not to apply for any trade marks with respect to the horse’s name, image, jockey silks or any other indicia:
“each owner… undertakes not to apply, or to authorise any other person to apply, to register the name, image, jockey silks or any other indicia associated with the horse as a trade mark…”
Makybe Diva winning the Melbourne Cup in 2005; (Credit: Getty Images)
Owners of famous horses such as Makybe Diva and Black Caviar have registered trade marks which cover a wide range of goods and services. This has allowed the owners of the horses to exploit the intellectual property in the name and image of the horse, and to defend their rights from infringement thanks to the protection offered by registration. In that regard, the value of commercialising the trade mark can be very high, particularly where the horses are well-known.
Black Caviar merchandise for sale by the owners of the racehorse; (Credit: blackcaviarshop.com.au)
By prohibiting owners from registering trade marks in relation to the name/ image/ colours of the horse, the ARB is removing any ability for the owners to protect the name/ image/ colours of their horse from being used by others. Even if the Registrar itself applies for the trade mark, the horse owner will not legally be able to pursue anyone who infringes the mark. There is no requirement in the Rules for the Registrar or the ARB to protect or defend the intellectual property of the horses that it registers.
The amendments will greatly reduce the ability for owners of racehorses to protect and commercialise the intellectual property associated with their racehorses. The Registrar has a monopoly over horseracing in Australia. Article 14 of the Rules states that:
“No horse if in Australia shall be entered for and no horse shall run in any race or official trial unless it has been registered with the Registrar of Racehorses…”
If owners breach the new rules, the Registrar may refuse or cancel the registration of the horse.
It would appear that owners of racehorses have no option but to comply with the new amendments to the Rules. The profitability of owning a well-known horse is likely to be impacted, as owners will not be able to maximise the benefits of properly commercialising the intellectual property associated with the horse. For instance, horse owners will not be able to sell the rights to produce products that indicate an association with the horse to a distributer or manufacturer of goods. The potential impact of the rules goes further – unless the Registrar takes it upon itself to protect the unauthorised use of the name/ image/ colours of a horse by registering the relevant trade marks and pursuing people who infringe upon those trade marks, the value of any intellectual property with respect to the horse will be dramatically reduced and may even be lost. This may seriously affect the value of race horses and could impact the future of the racing industry in Australia.