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ENGLAND - EUROPE / TRADE MARKS / TRADE MARK USE

Does trade mark infringement require that the infringing use be trade mark use; and, if so, what is trade mark use?

Peter Dyrberg and Michael Skylv

European Intellectual Property Review, Vol 25 No 5, May 2003

This article looks at the meaning and importance of trade mark use, with particular reference to the consequences for merchandising. The article is based on the case, Arsenal v Matthew Reed, heard both in the English High Court and in the Court of Justice of the European Communities. It concerns an independent trade who, from a stall outside the Arsenal Football Stadium, sells souvenirs and articles of clothing bearing the Arsenal Club's signs. There are clear indications on the stall that the products for sale are "unofficial". In litigation before the High Court, two questions arose which were referred to the Court of Justice: first, whether it was a valid defence against infringement that the use complained of did not indicate trade origin; secondly, if so, whether the fact that the use in question would be perceived as a badge of support, loyalty and affiliation to the trade mark was a sufficient connection in the course of trade between the goods and the trade mark owner. The article summarises the Opinion of the Advocate General, which favoured the trade mark owner (Arsenal), and the Judgment of the Court of Justice, which broadly agreed. However, as the authors of the article point out, the ways in which the Advocate General and the Court respectively reached the conclusion that Arsenal should win the case differed considerably. The Advocate General concentrated on the point that the functions of a trade mark were at stake when a third party engaged in commercial exploitation of the mark, which must be held to be reserved for the trade mark owner. The Court, on the other hand, emphasised the classic function of the trade mark as an indication of origin and that, as a matter of law, this function was compromised by the use of identical signs on identical products irrespective of whether there was confusion about the origin of the goods among Arsenal supporters. The authors say that this ruling reflects "the Court's wish to ensure uniform application of the Directive" (that is, the European Community Directive on the harmonization of national trade mark laws). As it turned out, the English High Court, on receiving the ruling by the Court of Justice, held that, while it was bound by the ruling on matters of law, it was not bound by the application of that ruling to the circumstances of a particular case. The Court considered that, in the present circumstances, the defendant's activities had been found as a matter of fact not to be an indication of origin; and it therefore gave judgment for the defendant. Finally, the Court held that the Court of Justice of the European Communities had exceeded its jurisdiction in seeking to apply its ruling to a specific case before a national court; but, as the authors note, this goes some way outside trade mark law. [20092]