In an Opinion which may have far reaching consequences for sports clubs, merchandisers and brand owners generally, the Advocate General has stated that Arsenal trade marks could be infringed by unofficial merchandise despite the High Court’s finding last year that consumers were not confused as to its origin.
As reported in our April 2001 bulletin, Arsenal Football Club sued Matthew Reed in respect of unofficial Arsenal souvenirs and clothing bearing Arsenal’s registered trade marks (the words ARSENAL and ARSENAL GUNNERS and the Crest and Cannon logos).
Arsenal’s passing off claim failed in the High Court as there was no evidence of any confusion on the part of consumers. The stalls near Highbury football ground from which Mr Reed sold the goods carried a prominent disclaimer making it clear the goods were unofficial.
Mr Justice Laddie rejected Arsenal’s argument that Mr Reed’s use of the Arsenal words and symbols was perceived by the public as indicating the origin of the goods. Instead, they were perceived by the public as badges of support, loyalty or affiliation. However, the point was referred to the European Court of Justice for a ruling, and the Opinion which the Advocate General issued last week will very likely be adopted by the ECJ.
The Advocate General’s Opinion will be music to brand owners’ ears. In his view it is “simplistic reductionism” to limit the function of a trade mark to the indication of trade origin. “The trade mark acquires a life of its own, making a statement & about quality, reputation and even, in certain cases, a way of seeing life.” The reasons why consumers choose to buy goods and services are irrelevant. What matters is that the people for whom goods or services are intended acquire or use them because they incorporate the distinctive sign.
In practical terms, there is nothing that Mr Reed could have done to avoid infringement once he used an identical sign. Disclaimers to the effect that his kit was “unofficial” were irrelevant. If the ECJ follows the Advocate General, it will make it much easier not only for sports clubs but also for pop groups, character merchandisers and other trade mark owners to control their markets. Street traders may face being driven underground and the pressure from competition authorities will be even greater on retailers of official football merchandise to compete on price if brand owners have a stronger monopoly as a result of this case.