On 12th June 2002 in the late
stages of a long-running contest, the Advocate General allowed trade mark
owners to score. Delivering his opinion on what constitutes "trade mark
use" he concluded that it had a wider meaning than that given by the
English courts. We will have to wait to see if the European Court upholds
the match result.
The case of Arsenal Football Club plc -v-
Reed was referred to the ECJ by Mr Justice Laddie to consider what
constitutes "use" of a trade mark. The Defendant, Mr Reed, sold
merchandise bearing signs identical to the registered trade marks of
Arsenal Football Club plc from a stall outside Arsenal's Highbury ground.
Mr Reed clearly identified the goods as unofficial merchandise and there
was no evidence of confusion on the part of customers. Laddie J. ruled
that the use of the Arsenal marks was not perceived by consumers as
indicating the origin of the goods, therefore there was no use "as a trade
mark". Instead, the use was held to be as "a badge of support, loyalty or
affiliation" which did not infringe s.10 of the Trade Marks Act 1994 or
Article 5 of the Council Directive 89/104/EEC.
In essence the questions referred to the ECJ were:
Q1. Is the trade mark proprietor entitled to prevent any use,
in the course of trade, of identical signs with identical goods or
Q2. Or, on the contrary, is the "use" protected by law only use
which discloses the connection between the trade mark proprietor and the
goods or services i.e. use which discloses trade origin? If the answer
to this question is 'yes', does the use as a badge of support, loyalty
or affiliation indicate such a connection?
The Advocate General's Opinion
The rights granted to the trade mark proprietor do not allow him to
prevent any use of the mark. Instead, a trade mark owner 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
Whether "use" of a sign by a third party is use "as a trade mark" is
a question for the national court to decide on the facts of the case. As
a starting point however, in circumstances where the sign and registered
mark are identical, and the goods or services for which it is used are
identical, it is assumed there is both a likelihood of confusion and
that use is "as a trade mark". The presumption of trade mark use by the
third party can...