When the case of Arsenal Football Club plc -v- Matthew Reed came before Mr Justice Laddie in April 2001 he found that, whilst Mr Reed was not passing-off his replica Arsenal kit as that of the Gunners, he needed help from the European Court to establish whether or not Mr Reed was infringing Arsenal's registered trade marks. However, once the Judge heard what the European Court had to say, he decided that he had no option but to ignore it!
Mr Reed is an Arsenal fan who has been selling unofficial Arsenal memorabilia and souvenirs for over 30 years. He convinced the Judge that, where used on replica kit and other merchandise, the ARSENAL name and badge did not function as trade marks in the traditional sense because the Arsenal marks did not tell people where the goods originated from. Rather, the Arsenal marks served merely as "badges of support, loyalty or affiliation". Since the law affords protection to the owners of registered trade marks in order to prevent people from misrepresenting the origin of their goods, Mr Reed argued that his use of the Arsenal marks, which did not misrepresent where the goods came from, was lawful.
The Judge had some sympathy for this argument and found that the UK legislation was too vague for him to be able to interpret it without help from the European Court. He therefore asked the European Court the following questions:
"Does a defendant in a registered trade mark infringement case have a defence on the ground that the use complained of does not indicate trade origin?"
The Judge went on to ask that if a defendant does have such a defence:
"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 to be considered an indication of origin?"
Well over a year later, and after the European Commission and the European Free Trade Association had both shared their views with it, the European Court gave its judgment.
The first half of the European leg
Arsenal got off to a poor start. Throughout the first half of the judgment the European Court appeared to be agreeing with Mr Reed's construction of the legislation. The European Court agreed that the enforcement of a trade mark registration must be reserved to cases where the use of the mark is liable to affect the consumer's ability to guarantee the origin of the goods in question. The answer to Mr Justice Laddie's first question was...