It is perhaps fitting, in the wake of the World Cup which has offered a vivid demonstration of the extent of football mania and the enormous advertising and branding revenues it generates, that the UK and European courts should recently have had to consider the extent to which a football club can assert its trade mark rights.
On 13 June 2002, Advocate General Ruiz-Jarabo Colomer delivered his opinion in respect of Arsenal Football Club plc v Matthew Reed. The opinion related to the construction of Article 5(1)(a) of the First Council Directive of 21 December 1988 to approximate the laws of the Member States relating to trade marks 89/104/EEC (“the Directive”).
The case was referred by the English High Court, before whom Arsenal Football Club had brought an action for, inter alia, trade mark infringement through the unlicensed sale by Mr Reid of football souvenirs and memorabilia bearing Arsenal’s registered trade marks – “Arsenal”, “the Gunners” and a Crest and Cannon device (“the Trade Marks”). The Trade Marks were registered for this class of goods.
The Defendant accepted that the words or designs he used were identical or sufficiently similar to the Trade Marks to constitute infringement if all other parts of the statutory provisions were complied with. However, he contended, inter alia, that there was no infringement because on a proper construction of s10 Trade Marks Act 1994 (“the Act”), the defendants' sign must be used as a trade mark for the relevant goods. He argued that he did not so use the words or devices - they were badges of allegiance.
S10(1) of the Act provides that “A person infringes a registered trade mark if he uses in the course of trade a sign which is identical with the trade mark in relation to goods and services which are identical with those for which it is registered.
Section 10(1) Act implemented Article 5 (1)(a) of the Directive which provides that
“The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:
(a) Any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered…..”
Laddie J sought guidance as to how section 10 should be construed, referring the following questions to the European Court of Justice:
- Where a third party uses a registered trade mark in the course of trade in relation to identical goods to those registered (in respect of which no other defence in available) does the third party have a defence to infringement on the ground that the use complained of does not indicate trade origin (i.e. a connection in the course of trade between the goods and the trade mark proprietor)?
- If yes, is the fact that the use in question would be perceived as a badge of support, loyalty or affiliation to the trade mark proprietor a sufficient connection?
The Opinion of Advocate General Ruiz-Jarabo Colomer
(a) Answer to question 1
The Advocate General saw Article 5(1)(a) as concerned with protecting the accuracy of information fed to the consumer. Article 5(5) excluded from trade mark protection under the Directive use of the trade mark for purposes other than that of distinguishing goods and services - it therefore followed that “conduct consisting in the use of a sign for purposes other than distinguishing a product or service from other products or services is not covered by Article 5(1)”. Hence, under Article 5(1)(a) the proprietor could only object to the use by a third party of his trade mark as such.
The Advocate General acknowledged that, in itself, a finding that Article 5(1)(a) covered trade mark use was “as good as saying nothing at all” unless he attempted to define such use. He sought to define the use by reference to the purpose of trade marks. The immediate purpose was to guarantee the user the identity of the origins of the goods - however, this was "no more than a staging post on the road to the final objective" which was to ensure a system of genuine competition in the internal market. Distinctive signs could also indicate quality, the reputation or renown of the producer or provider and had advertising purposes in order to inform and persuade the consumer. These were all uses which, to achieve genuine competition in the internal market, enabled the consumer to distinguish between the goods and services which various undertakings so he could select freely between the many choices available to him.
The Advocate General labelled it “simplistic reductionism” to limit the function of the trade mark to an indication of trade origin. Indeed, in reality, the user is often unaware of who produces the goods he consumes. A trade mark sends out autonomous messages. “[T]here is nothing to prevent the consumer, unaware of who manufactures the goods or provides the services which bear the trade mark from acquiring them because he perceives the mark as an emblem of prestige or a guarantee of quality”. Further “in certain cases consumers are more interested in the trade mark itself than in the goods to which it applies”.
The trade mark owner’s rights were limited to what was required for a fair and undistorted system of competition. They did not give him the right to exclude all the world but only to exclude “those who seek to profit from [the mark’s] status and reputation, passing it off or using it in such a way as to mislead consumers with regard to the origin as well as the quality of the goods or services it represents”. Hence, although recital 10 to the Directive provided that “the protection afforded by the registered trade mark, the function of which is in particular to guarantee the trade mark as an indication of origin, is absolute in the case of identity between the mark and the sign and goods or services” this did not literally mean protection against all comers. "Absolute means that protection is afforded to the proprietor irrespective of whether there is a likelihood of confusion because in such situations there is a presumption that there is such a likelihood and not on the contrary that protection is accorded to the proprietor erga omnes".
The presumption, was, however rebuttable and there was a possibility "however remote it may be" that in a specific case use of a sign identical with a mark on the same goods would not infringe Art 5(1)(a). Whether the presumption could be rebutted would be a question of fact for the national court. Where there was use of identical signs in relation to the same goods or services, there would be a presumption. Relevant factors where the situation was less clear cut (where there was no identity giving rise to a presumption) would include the nature of the goods and services, the situation of those for whom they are intended, the structure of the market and position of the proprietor.
In summary, therefore, the Advocate General answered thus:
- Article 5(1)(a) means the proprietor is entitled to prevent third parties from using, in relation to the same goods or services, identical signs which are capable of giving a misleading indication as to their origin, provenance, quality or reputation;
- Whether use of a trade mark by a third party is use as a trade mark is a question of fact for the national courts but there is presumption iuris tantum that it is trade mark use where there is identity of signs and goods or services.
(b) Answer to Question 2
The Advocate General approached this question by attempting to specify concrete examples of the notion of “use”. The Advocate General stressed that trade mark owners could only object to someone else using the trade mark "in the course of trade” i.e. any commercial activity involving the production and supply of goods and services on the market. Again, the rationale for this was that a registered trade mark was only “at the service of the purpose that transcends it” – enabling consumers to make informed selections in the context of an open market.
Hence, a use would not constitute trade mark infringement merely because it constituted a material advantage or was capable of being expressed in economic terms, but only use “which occurs in the world of business, in trade, the subject of which is precisely, the distribution of goods and services in the market”. By way of example, the paintings by Andy Warhol of Campbell’s soup tins (from which he obviously obtained an economic benefit), or uses for educational purposes would, therefore, not infringe. Private use that someone might make of the mark BMW on a key ring, merely for the convenience of having all his keys on one holder would also be legitimate.
Applying the “broad interpretation” set out in response to his first question, the Advocate General concluded that use of a sign perceived as a badge of support, loyalty or affiliation was a method of using a trade mark. The use expressed a connection between the scarves bearing the trade marks and Arsenal. The nature of quality of that relationship did not matter so long as the consumer decided to purchase the goods on account that the “article is identified with the trade mark and through it with its proprietor, that is to say with the team”; “the decisive factor is not the feelings which the consumer …or even third parties using it harbour towards the registered proprietor, but the fact that they are acquired because, by bearing the sign, the goods identify the product with the trade mark - irrespective of what the consumer thinks of the mark, or even, as the case may be, with the proprietor.”
However, despite the apparent certainty of this conclusion, the Advocate General did not consider that the issue could be resolved by reference to the consumer alone. He considered that it was also relevant to consider whether the third party had, in fact, attempted to exploit it commercially (regardless of his motives) and also had regard to the perspective of the proprietor (since if the trade mark was not exploited commercially it would lapse). He considered it necessary to decide whether a football club, in registering a trade mark did so only in order to distribute among its supporters products bearing the sign with the aim of securing greater support to help its teams to sporting success or whether it did so as just another a business activity to enhance its profit and loss account.
The test had to be applied by applying an objective analysis of the position which the companies and entities which manage the major football clubs occupy in society and the economy, rather than examining the intentions of each sporting entity. Applying such a test, the Advocate General found that football clubs are multi-million pound businesses requiring huge sums to buy players and generating enormous revenues. One of the tools for doing this was merchandising which had revealed the enormous potential of football as a business. He concluded that “The great clubs such as Arsenal..are not mere sporting associations…but genuine emporia which, with the object of playing professional football, pursue an economic activity of the first order…..When they register a sign in order to use it as a trade mark and to supply on the market, either directly or through a licensee, certain goods or services identified with the mark, they …are entitled to object to third parties using an identical indication with the purpose of exploiting it commercially….by employing all the methods available under the law, including the most extreme.”
In summary, therefore, the Advocate General answered thus:
- The proprietor is only entitled to prevent third parties from making use for the purposes of commercial exploitation;
- The reasons why a consumer buys the goods or services are irrelevant so long as the consumer acquires or uses them because they incorporate the distinctive sign.
The Opinion of Advocate General Ruiz-Jarabo Colomer has put to rest a debate as to the meaning of s10(1) of the Act (which applies Article 5(1)(a)) which has perplexed the UK courts since the inception of the Act. The germ of the uncertainty stemmed from the language of the Act – because s10(1) refers to “sign” and not trade mark. While it was clear Article 6 of the Directive (implemented by s11 of the Act) permitted certain third party uses of a trade mark in the course of trade– such as where it is the third party’s own name or address, indications concerning the kind, quality, quantity, intended purpose, value or geographical origin – it was not clear whether this was an exhaustive list, such that any use not permitted by s11 would be infringing even if it was non-trade mark use. For example, in British Sugar plc v James Robertson & Sons Ltd Jacob J held that there was no requirement that use for the purposes of s10(1) should constitute trade mark use – therefore, the sale of a sweet spread labelled “Robertson’s Toffee Treat” infringed the registration of “TREAT” for dessert sauces and syrups. Most recently, the Court of Appeal in Philips v Remington took the same view.
The Opinion has resolved the uncertainty and construed section 10(1) in a way which is consistent with the Directive and the Act. This is, perhaps, a relief from a policy perspective since, as Laddie J observed in the High Court, if the Directive allowed a trade mark owner to restrain use of his mark in relation to goods, whether in a trade mark sense or not, that would create a “new and very wide monopoly”, particularly given that criminal as well as civil penalties can be imposed for infringement. To construe s10(1) so as to cover non-trade mark use would also, as he pointed out, appear to be inconsistent with other provisions of the Act – for example, it would mean that distinctiveness was required in order to secure a trade mark, but that mark would then allow a monopoly over uses of the same sign which were not distinctive.
However, the effect of the finding that Article 5(1)(a) and its UK counterpart s10(1) only apply to use of a trade mark as such is counterbalanced by the presumption of confusion in respect of identical marks in relation to identical goods or services. In effect, a test of likelihood of confusion is being read into Article 5(1)(a). However, it remains crucially different from Article 5(1)(b) (which provides that use of identical or similar marks in respect of identical or similar goods constitutes infringement where there is a likelihood of confusion, including association) because in the case of the former limb a presumption arises, in the latter the burden of proof is on the plaintiff. In practice, the Advocate General’s comment that the likelihood of rebutting the presumption is “remote” suggests that he did not consider it would have huge relevance. He seemed to regard the requirement that the use be one of commercial exploitation – that it be “in the course of trade” as more meaningful in practice. However, case law under the Act’s predecessor, the Trade Marks Act 1938 suggests that there will be cases of commercial exploitation of a trade mark through non-trade mark use. For example, in Mars (GB ) Limited v Cadbury Ltd the marks TREETS was held not to be infringed by the use of the words “treat size” on packaging for miniature Wispa bars – the words were being used to describe the nature of the product and not as a trade mark. In Mothercare (UK) Ltd v Penguin Books Ltd use of “Mothercare/Othercare” as the title of a book concerning working mothers was held not to infringe the mark MOTHERCARE for books – the title was being used as a description for the contents of the book and not in a trade mark sense.
The effect of the finding that trade mark use is required for Article 5(1)(a) is also counterbalanced by the wide conception of the function and use of a trade mark which the Advocate General adopted. The Opinion is refreshing insofar as it acknowledges the complex and multi-faceted appeal of trade marks. It is clear that, in reality, many consumers may be drawn to trade marks without immediately connecting the mark with a proprietor or licensor. The trade mark has, as he observes “a life of its own, making statement about…quality reputation, even …a way of seeing life”. However, it is arguable that ultimately, if one were to question such consumers there would be at some level an awareness of some unnamed source from which the reputation, quality etc emanates and the Advocate General himself, even in trying to draw the lines otherwise, frequently returns to the touchstone of the proprietor.
One might also question the utility of using the objectively construed intention of the trade mark proprietor in registering the mark. It is doubtful that requiring that commercial exploitation is the only reason for registering a mark can ever be a meaningful guide - given the complexity and costs of registering a mark and the need for commercial use to be made of if it is to remain in existence it seems unlikely that any trade mark proprietor would bother if not because they hoped to make some profit from the venture.
Ultimately, the Opinion seem to be the correct decision on the facts. No one who has watched the World Cup can doubt that football is a serious money making business and that football clubs need to be able to protect their trade marks.
Also published in the August 2002 issues of World Intellectual Property Report and World Licensing Law Report.
 It should be noted that the European Court of Justice have yet to rule on this case and the Opinion of the Advocate General, while generally followed, is not binding on it.
 Although directives are binding as to the result to be achieved, it is up to each Member State to implement them.
 Article 5(5) provides that “Paragraphs 1 to 4 shall not affect provisions in any Member State relating to the protection against the use of a sign other than for the purposes of distinguishing goods or services, where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark”.
  RPC 281
  RPC 283
 in which s4 stipulated that the Defendant’ s use had to be as a trade mark or in a trade mark sense
  RPC 387
  RPC 113