Arsenal FC had been fighting a running battle for ten years with an Essex stallholder over Gunners branded clothing.
Who: Arsenal Footb Who: Arsenal Football Club Plc and Matthew Reed
When: April 2001
Where: Chancery Division of the High Court
Matthew Reed of Stanford-le-Hope, Essex had been selling scarves, hats and shirts carrying Arsenal emblems from stalls near the Highbury ground for 30 years. Although his stalls stated that no merchandise sold was authorised by Arsenal FC, the football club had been after Matthew for 10 years, the battle culminating in a showdown before Laddie J in Chancery. Arsenal sued for passing off. Since "Arsenal", "Gunners" and the distinctive badge and cannon logo were all registered trade marks for a wide range of goods including clothing, the Premier league club also sued for trade mark infringement. Matthew cheekily argued first that all the Arsenal trade marks should be revoked and struck off the register for five years’ non-use. This was because their appearance on the front of tee shirts and caps and across scarves (just as they appeared on Reed’s merchandise) was not indicating the origin of the product and was therefore not use in a trade mark sense. The Judge rejected Reed’s argument here, saying that the Arsenal brands also appeared on neck labels and swing tags, which was classic use in a trade mark sense. Laddie J was more sympathetic, however, to the Essex man’s other arguments. On passing off, despite Reed’s three decades of trading under the club’s nose, not a single instance was produced to the court of a person being confused as to whether Reed’s products came from Arsenal FC. Without evidence of a "misrepresentation" of this kind, or an obvious case where this is highly likely, no case of passing off can get off the ground.
On trade mark infringement, going back to the point that arose on Reed’s unsuccessful revocation argument, the Judge was doubtful whether Reed’s use of the Arsenal brands was trade mark use at all. But this begged the question of whether "trade mark use" was necessary for there to be an infringement. Some UK judgments have seemed unequivocal that this was not needed. The word seemed to be that unless purely incidental and minimal, all unauthorised reproduction of registered brands on products for which they were registered was an infringement. Laddie J was not of the same view, and Arsenal were denied judgment, with the "trade mark use" point referred to the European Court of Justice. In the meantime Mr Reed can continue selling his merchandise.
Why this matters:
Some might say that even if 'trade mark use' is required for there to be infringement, the way that Reed was using the Arsenal FC brands was exactly that. Surely all the merchandise’s value came from the appearance of the brands, but this verdict is consistent with recent judicial blows sustained by the estates of Elvis Presley and Diana Princess of Wales. It is a reminder that if brands are to be protected by the law as trade marks they must be used not as decoration, but as badges of origin. Also, it is interesting that the club did not try to get around these complications by way of a copyright infringement claim in respect of Reed’s reproduction of copyright artistic works in the form of the badge and gun logo. One can only assume the works in question were out of copyright. The European Court of Justice will now determine whether use of a brand as a "badge of alliance" can be a trade mark infringement. The decision will no doubt be anxiously awaited by football clubs with millions of pounds of licensing revenue at stake.