Advocate General's Opinion in Arsenal v Reed: Golden Goal for Trade Mark Owners?

Author:Mr William James
Profession:Herbert Smith
 
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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.

Background

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.

Issues

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

services?

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

reputation".

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...

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