Up the gunners

Intellectual property law By Stuart Lockyear, Davenport Lyons, LondonArsenal Football Club Plc v Matthew Reed (Chancery Division, 22 March 2001)This recent High Court case caused a flurry of activity among trade mark practitioners and brand owners alike, when Mr Justice Laddie questioned the very nature of the function of a trade mark and referred two important questions to the European Court of Justice.Like most trade mark proprietors, Arsenal FC expends a considerable amount of money policing and enforcing its registered trade marks and also derives considerable income from the sale of souvenirs and memorabilia manufactured under licence.

In this case, Arsenal FC issued proceedings against Matthew Reed for infringement of its registered trade marks, passing off and copyright infringement.

Mr Reed is a salesman who had been trading in football memorabilia mainly relating to Arsenal FC for more than 31 years.

Mr Reed's main business operated from a large stall located in the front garden of a private house outside Highbury football ground in north London.

He displayed a large sign at his stall with the message: 'The words or logos on the goods offered for sale are used solely to adorn the product and does not imply or indicate any affiliation or relationship with the manufacturers or distributors of any other product, only goods with official Arsenal merchandise tags are official Arsenal merchandise'.Arsenal FC's claim in passing off failed as it was unable to provide any evidence of confusion between Mr Reed's merchandise and Arsenal FC official merchandise.

Arsenal had previously dropped its claim for copyright infringement.

The argument then turned to whether Mr Reed's placement of the 'Arsenal' and 'Gunners' word marks and the crest and cannon devices on his merchandise was an infringement of Arsenal's registered trade mark rights in those various marks.

It was clear that Mr Reed was affixing signs identical and confusingly similar to the Arsenal registered trade marks on the identical goods in respect of which those trade marks were registered.

However, Mr Reed's defence argued that there was no infringement because, on a proper construction of section 10 of the Trade Marks Act 1994, the defendant's sign must be 'used as a trade mark' for the relevant goods.

Normally 'use of a sign as a trade mark' is use which indicates trade origin, that is to say, a connection in the course of trade between the goods and the trade mark proprietor.

Mr Reed's argument was that, in his case, the words and devices on his memorabilia were not used as trade marks.

He argued that they were not indicative of origin, but rather were badges of allegiance.

It was agreed by both parties that when deciding whether or not a sign has been used in a trade mark sense, what counts is the impact of the use on a customer - that is to say, what would the customer's perception be?Mr Justice Laddie found that the mere fact that words or designs are used on an item of clothing does not mean that they are used as a trade mark.

By way of example, he illustrated the point that a short while ago when Arsenal had a commercial relationship with the electronics company JVC, players wore shirts bearing the sign 'JVC'.

All parties accepted that such use of the sign 'JVC' was not use as a trade mark; rather, it was a form of advertising for the electronics company in question.Mr Justice Laddie said the Arsenal signs on Mr Reed's products would be perceived as a badge of support, loyalty or affiliation to those to whom they are directed.

He did not take the view that they would perceive them to be indicative of trade origin.Mr Justice Laddie went on to consider whether such non-trade mark use can be held to infringe the registered trade mark rights of Arsenal FC.

Under section 10 of the Trade Marks Act 1994, infringement is defined in terms of the use of a 'sign' by the defendant and not the use of a 'trade mark'.

The effect of this drafting has been considered in previous cases.

In British Sugar Plc v James Robertson & Sons Ltd (1996) RPC 281, Mr Justice Jacob expressed the view that use of a sign in a non-trade mark way could infringe a registration.

The Court of Appeal confirmed his view in the case of Philips Electronics Limited v Remington Consumer Products (1998) RPC 283.

Philips is currently the subject of a referral to the European Court of Justice whose decision has still not been handed down.

Mr Justice Laddie had no alternative but to refer this case also to the European Court of Justice.

Therefore, this important point still remains undecided.

Currently the Court of Appeal is of the view that use of a sign in a non-trade mark sense could constitute infringement but it seems that the consensus among trade mark practitioners is that the European Court of Justice will reverse this and decide that such non-trade mark use is not an infringement of registered trade mark rights.