Trade Mark Infringement and Passing Off

06 April 2001

Jennifer Martin

Arsenal Football Club plc v. Matthew Reed (Laddie J: 6 April 2001)

The claimant was a well known football team having registered trade marks in the words 'ARSENAL' and 'GUNNERS' as well as in a crest device and a cannon device, all in classes 06, 09, 14, 16, 18, 20, 21, 24, 25, 26, 27 and 28 (although in class 25, the claimant had been unable to register 'GUNNERS', but had registered 'ARSENAL GUNNERS' instead) (the "Marks"). The defendant had traded for 31 years as a vendor of football souvenirs and memorabilia, particularly relating to Arsenal FC. The defendant had a number of stalls near Arsenal's ground at Highbury at which he sold his goods.

The claimant was attempting to stop the sale of unlicensed goods by the defendant by advancing claims of passing off and trade mark infringement.

Passing Off

The claimant made two claims of passing off against the defendant:

  • sales of unlicensed products bearing the Marks would mislead the public into believing that the products were produced or licensed by, or associated or connected with, the claimant; and

  • an employee of the defendant deliberately tried to deceive customers by falsely representing an unlicensed product as being 'official'.

With regard to the first claim, Laddie J considered that since the defendant had been carrying on his trade for some considerable time, any confusion and/or damage should be readily ascertainable. The claimant did not present any evidence of confusion, despite obviously being aware of the desirability of such evidence, and it was held that this was because there was none. As there had been no confusion, there had been no damage and the passing off claim failed. There were also various factors which made confusion less likely on the facts, such as the use of disclaimers, although these factors were not determinative of the issue of confusion in itself.

Further, Laddie J held that the defendant's use of the Marks on the products was not use as a trade mark, not being indicative of trade origin.

As to the second claim, it was held on the facts that it was likely that there had been a misunderstanding. The employee seemed to be 'honest' and had strongly denied having sold the product as 'official'. The claim failed.

Laddie J further mentioned that confusion must occur in the relevant public and went on to identify two groups of potential customers: one which bought products bearing the Marks because they functioned as signs of allegiance to the team, and one which would want to buy official merchandise to support financially the team, but which would also purchase the products to function as signs of allegiance.

Trade Mark Infringement

The claimant claimed trade mark infringement under ss10(1) and 10(2) Trade Marks Act 1994 ("TMA"). The defendant accepted that the words and designs he used were identical or sufficiently similar to the registrations to amount to infringement, if all other statutory requirements were fulfilled. However, there was an ambiguity in s10 TMA and in the underlying Trade Marks Directive (89/104/EEC), which refers only to use of a 'sign', and the defendant claimed that in order for infringement to take place, the defendant must use the sign as a trade mark. He claimed that the Marks were not used as trade marks on his products but as badges of allegiance. Laddie J agreed that potential customers would perceive the signs on the defendant?s products as signs of support and allegiance, and not as signs of trade origin.

In order therefore for there to be trade mark infringement, s10 TMA and the underlying directive had to be construed such that non-trade mark use would infringe. The law in this area was unclear. The Court of Appeal had decided in Philips Electronics Limited v Remington Consumer Products ((1999) RPC 809) that infringing use did not have to be use in a trade mark sense and Laddie J felt unable to offer a different view. Such a view would have to come from the House of Lords or the European Court of Justice ("ECJ"). The Advocate General?s opinion in Philips v Remington offered no help, and accordingly Laddie J decided he could not rule on the issue of infringement until the ECJ had clarified the point. He decided to hear Counsel on whether he should refer to the ECJ, and if so the form of the reference, or whether the Court of Appeal should consider the matter first.

The defendant claimed invalidity under s46 TMA for non-use and s47 TMA for being incapable of distinguishing in a trade mark sense. Both claims were rejected. As regards s46, Laddie J held that the claimant had not just used the signs in the way in which the defendant had used them, but had also used them in a trade mark sense on swing tickets, neck labels and packaging. The relevant customer would perceive that as trade mark use. As for s47, there was no reason why trade mark use could not be distinctive simply because the signs could also be used in other, non-trade mark ways.