Arsenal Football Club Plc -v- Matthew Reed
Court of Appeal (Aldous, Clarke & Jonathan Parker, LJ)
 ECWA Civ 96
Have Arsenal Football Club finally won their match against Matthew Reed, seller of unauthorised Arsenal merchandise, in the second half of extra time? The Court of Appeal has reversed the decision of Laddie J. (see Hot Topics for December 2002) that Reed had not infringed the trade marks, despite a ruling by the ECJ which appeared to have resolved the dispute in favour of AFC.
AFC sued Reed for trade mark infringement and passing off because he was selling unauthorised merchandise bearing the AFC trade marks. At first instance, Laddie J. held as a fact that Reed was not using the marks to indicate the origin of the goods he sold, indeed Reed always told customers they were not AFC goods. Laddie J. held that Reed was using the marks as a badge of support, loyalty or affiliation.
Laddie J. had concluded that using the signs as a badge of loyalty was not a "trade mark use" because it did not indicate a trade connection between the goods and the proprietor of the marks. His view was that use that was not trade mark use was non-infringing, but he referred to the ECJ the question of whether a defendant who is using an identical sign on identical goods has a defence if the use complained of does not indicate trade origin (i.e. a connection in the course of trade between the goods and the trade mark proprietor).
The ECJ did not answer directly the question of whether use other than trade mark use was an infringing use. The ECJ ruled that "in circumstances such as those in the present case" there was no defence. It was immaterial that the use was perceived as a badge of loyalty rather than an indication of origin.
When the case returned to Laddie J. he held that the ECJ had essentially reversed his finding of fact, something the ECJ was not competent to do. Laddie J. held that on the basis of the ECJ's opinion on the interpretation of the Trade Mark Directive, there was no trade mark use and therefore no infringement. AFC appealed to the Court of Appeal.
The Court of Appeal looked at two particular aspects of the ECJ ruling. First, what was the Court's view as to the interpretation of the Directive given that the ECJ did not directly answer the question referred to it? Second, had the ECJ made a finding of fact inconsistent with the findings of fact made by the judge, and, more generally, to what...