Arsenal Football Club v Matthew Reed
The steps taken by Arsenal Football Club to try to stop the sale of unauthorised souvenirs or supporters' items by Mr Reed, a private individual, have created widespread interest. Is it a club justifiably trying to collect income which should be its own, or is it a small street trader legitimately trying to carry on supplying scarves etc to club supporters as he has done for decades? Should a club have monopoly rights in supporters' scarves etc?
Laddie J in the English High Court referred a technical trade mark question to the European Court of Justice (ECJ) for a ruling. The ruling was given and the case came back to Laddie J to apply it - with what result? Laddie J's judgement surprised most people, in that it was expected that the ECJ ruling would give game, set and match to Arsenal, so that any unauthorised supporters' items carrying things which the Club had registered as Trade Marks would be an infringement. Laddie J held that the range of infringing acts is very much narrower than that and, in particular, that "where the defendant's use of a mark is not intended by him, or understood by the public, to be a designation of origin, there can be no infringement". In other words, if whatever is on the supporters' items will merely be seen as a badge of loyalty, that will not be Trade Mark infringement.
Arsenal, clearly took issue with Laddie J's judgement and appealed to the UK court of Appeal.
The Court of Appeal has now handed down its decision in Arsenal's favour. The Court of Appeal concluded that infringing use of a sign is any use that is liable to affect the trade mark's ability to fulfil its essential function of guaranteeing origin - irrespective of whether in this case the sign might also be perceived as a badge of allegiance.
At the time of writing however it seems likely that Mr. Reed might take the contest into injury time by seeking leave to appeal to the House of Lords.
We will keep a watch on this struggle and in the meantime we recommend that one should continue with Trade Mark registration programs - plus.
- Copyright ownership: make sure one owns copyright in any crests or other logos so as to be able to sue for copyright infringement too.
- Design registration: consider design registration for any new crests or the like - or even stylised lettering - the effect not yet being certain since this is a new development and not yet tried in court, but the cost is not high and prudence suggests that, if the budget permits, one should try it.
If you have any questions at all, please ask us.