When we last reported progress in this battle by Arsenal FC to stop unauthorised “Gunners” merchandise being sold outside Highbury, it looked like victory for the current league leaders.
Who: Arsenal Football Club Plc and Matthew Reed
When: Chancery Division of the High Court of Justice, London
Where: December 2002
In this third tie between Arsenal Football Club and "Gunners" hats/scarves vendor Matthew Reed, the Highbury vendor ran out the winner. Arsenal FC had sued Reed for passing off and trademark infringement, wanting to stop him selling unauthorised merchandise carrying "Gunners" logos which were registered trademarks owned by Arsenal FC.
In the first match, Chancery Judge Laddie found as a fact that punters buying Reed's merchandise were not buying it because they thought that the trademarks indicated the stuff came from Arsenal FC. Their only motivation was to have something which showed that they were Arsenal fans. Because of this finding, Laddie J threw out the passing off claim and felt there was no "trademark" use of the Arsenal FC brands, but here he had a quandary. Case law on the question of whether there had to be "trademark use" of a registered trademark in order to infringe it was not 100% clear. He therefore referred this question to the European Court of Justice.
In the second match, the ECJ pronounced in favour of Arsenal. In coming to this finding, however, it seemed to reach a finding of fact which cut across that of Laddie. The European Judges felt that Reed's use of the Arsenal brands could be perceived by some customers as an indication that the merchandise had come from Arsenal FC.
Back the case then went to Laddie J. Here, Reed's lawyers submitted to him that because the ECJ had done something it was not entitled to do, namely reach different findings of fact to that of the first instance Judge in the form of Laddie, the ECJ decision should be ignored. Mr Justice Laddie agreed. He ignored the ECJ finding, and found in favour of Reed. Arsenal are now taking the case to the Court of Appeal.
Why this matters:
Brandowners and sports goods manufacturers in particular will be continuing to watch this case very closely and the outcome of the Court of Appeal re-match will now be eagerly awaited. Marketinglaw's opinion on this, for what it is worth, is that the prevailing message from previous cases on this point is that there does not have to be "trademark use" for infringement to occur in these circumstances and that this will be the ultimate decision of the Court of Appeal, or maybe even the House of Lords if it comes to it. Until the point is 100% clarified, however, Mr Reed will no doubt continue, as will many others throughout the country, to sell unauthorised sports merchandise.