UK Football Club Wins Long-Fought Trade Mark Case

by Robin Pilgrim, LawAndTax-News.com, London

02 June 2003

Following a protracted battle in the UK and European courts, the United Kingdom's Court of Appeal has ruled that a street vendor's selling of unofficial Arsenal Football Club merchandise constitutes an infringement of the club's trade mark rights.

The landmark case began in late 2001, when Arsenal took Matthew Reed, who sells unofficial branded goods such as hats, scarves, and shirts to the High Court. The Court ruled that Mr Reed was not guilty of deliberately misleading consumers as to the origin of his goods, and announced that the use of the club's logo on his merchandise constituted a statement of allegiance, rather than a trade mark infringement.

Several questions regarding the interpretation of the EU's 1989 Trade Mark Directive were referred to the European Court of Justice, which overturned the High Court ruling. However, when the case was referred back to the High Court, the presiding judge announced that the ECJ had overstepped its remit. Accordingly, the European court's ruling was disregarded, and the original High Court judgement reinstated.

Ruling following the recent Court of Appeal hearing of the case, Lord Justice Aldous suggested that the main issue was whether Mr Reed's unofficial merchandise was likely to damage the trade mark held by Arsenal:

'I accept the judge's finding that the trade marks upon the goods are considered to be badges of allegiance, but all the evidence suggests that the trade marks do also designate origin of the goods to a substantial number of consumers,' he announced, continuing:

'As to Mr Reed's use, I accept that he does differentiate his goods from official goods, but his goods marked with the trade marks were identical to those emanating from Arsenal and therefore his use of the word Arsenal would, absent an explanation, carry the same inference as similar use of the trade mark by Arsenal.'

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