Round-up of the Arsenal case and its impact
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THE STORY TO DATE After two years of toing and froing between the English High Court and the European Courts of Justice, a decision was handed down for the Arsenal v Reed case by the Court of Appeal on 21st May, 2003 in the long-running battle between the Arsenal Football Club (AFC) and Mr Reed, the street trader selling football souvenirs.
High Court The Arsenal case kicked off in April 2001 when AFC brought proceedings against Mr Reed alleging trade mark infringement and passing off.1 Mr Reed had, for over 30 years, been selling, on the grounds of the AFC’s pitch during matches, football memorabilia and souvenirs such as badges, hats and scarves bearing the AFC’s trade marks ‘ARSENAL’ and ‘GUNNERS’ together with AFC’s cannon logo. At the hearing, the claim of passing off was unsuccessful as the AFC failed to provide evidence to establish that members of the public confused Mr Reed’s goods with theirs. This was unsurprising given that AFC made great efforts to ensure that supporters were aware that only certain goods could be described as ‘official’. AFC’s licensed traders around the AFC ground displayed signs stating that ‘only official merchandise is sold here’. It was also significant that Mr Reed had installed a sign at his stall which
bore a notice to the effect that the goods were not ‘official’. Additionally Mr Reed, when he had been able to acquire and sell official AFC merchandise, made it clear to his customers what was, and what was not, official merchandise. In respect of the claim for trade mark infringement under the Trade Marks Act 1994, Mr Reed accepted that the words and logos on his products were identical or sufficiently similar to AFC’s registered trade marks. He defended himself, however, by saying that his customers perceived the purchased products merely as badges of allegiance and loyalty towards AFC. Therefore, use of AFC’s trade marks on his products did not infringe as it was not ‘trade mark use’ in a strict legal sense (which was to indicate the goods originated from AFC). AFC disagreed with this view, relying on previous decisions in British Sugar plc v James Robertson & Son Limited2 and Philip Electronics Limited v Remington Consumer Products.3 Those cases laid a wide scope for trade mark infringement whereby any use of a mark was held to constitute infringement whether or not it was use in a ‘trade mark sense’. Mr Justice Laddie concurred with Mr Reed that his use of the marks was not for the purposes of infringement as it served as a badge of allegiance. It did not carry any message of trade origin and thus did no harm to the essential function of
HENRY STEWART PUBLICATIONS 1479-1803 BRAND MANAGEMENT VOL. 11, NO. 2, 111–114 NOVEMBER 2003
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ROUND-UP OF THE ARSENAL CASE AND ITS IMPACT
the trade marks. The Trade Marks Act 1994, which implemented the (European) Trade Marks Directive 89/104/EEC, did not, however, make clear whether or not infringing use encompassed use in a non-trade mark sense (where the mark was not used to indicate origin of the goods). In the light of this,
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