The Legal Eagle Study Notes
amount to “trade mark reference to the ECJ of Appeal held that the
use”, or use indicating hoping to clarify the findings of fact reached
Intellectual trade origin. The Trade matter once and for all, by the ECJ were not, in
Property Law Marks Act 1938 required asking: “… does the third fact, inconsistent with
trade mark use, but the party have a defence to those reached by Laddie
Trade Marks Act 1994 infringement on the J. Laddie J had held that
Case Analysis: (“TMA”), which was ground that the use there was no trade mark
based on Directive complained of does not use of the Arsenal Marks;
Arsenal v Reed 89/104/EEC (the indicate trade origin …?”, they
The long-awaited Court “Directive”), does not i.e. whether trade mark
of Appeal decision refer to the concept. was use necessary for
in Arsenal Football Club English judges have infringement of a trade
plc v Matthew Reed has therefore felt a lacuna in mark under the Directive. “would be perceived as a
finally been delivered. the law and several badge of … affiliation to
However, those who cases have considered The ECJ, unfortunately, those to whom they are
were hoping for certainty whether trade mark use did not answer the directed. They would not
in what has become a is necessary under the referred question directly, be perceived as
fraught area of trade TMA, and come to the so that its words had to indicating trade origin”.
marks law will be conclusion that it was be interpreted if an
disappointed, not least of not. There is a clear answer to the question
all because of a tension in balancing the was to be distilled.
conflicting House of interests of trade mark Laddie J considered that The ECJ had held that
Lords judgment, R v owners, who wish to the ECJ had said that the use of the Arsenal
Johnstone, handed down have the widest possible trade mark use was Marks was “such as to
the day after the Arsenal protection for their necessary in order to create the impression
decision. brands, and those of infringe a trade mark. He that there is a material
other parties, who would also found that the ECJ link in the course of
The brief facts of the wish to be able to use the had made findings of fact trade” between the goods
Arsenal case are as marks in certain which were inconsistent and Arsenal, and found
follows. Arsenal owned circumstances. with those which he had that
UK trade mark Exceptions to trade mark made at trial; since it did
registrations for infringement, such as use not have the right to do
“ARSENAL”, “ARSENAL to describe that, he could ignore
GUNNERS”, a cannon characteristics of the those findings and the “there is a clear possibility
device and a crest device product to which they are consequent conclusion in the present case that
(the “Arsenal Marks”). Mr applied, are given in reached by the ECJ, and some consumers, in
Reed had been selling sections 11 and 12 TMA, apply the guidance on particular if they come
football memorabilia but it could be argued the law, as he saw it, to across the goods after
depicting the Arsenal that certain uses fall the facts established at they have been sold by
Marks from stalls near through the gaps – they trial. He found no Mr Reed and taken away
Arsenal’s ground at may not be clearly infringement. from the stall where the
Highbury (at which infringing uses, but notice appears, may
notices stating that the neither do they fall Arsenal appealed, and interpret the sign as
products were not official squarely within the the Court of Appeal designating Arsenal FC
were prominently statutory defences. overturned Laddie J’s as the undertaking of
displayed) for around 30 decision. The judgment, origin of the goods”.
years. Arsenal sued for Laddie J, who heard the given by Aldous LJ,
trade mark infringement Arsenal case in the High considers the ECJ’s
and passing off. Court, was not decision in depth. The The key to reconciling
comfortable with the idea Court of Appeal agreed these apparently differing
Arsenal lost on passing that any use of a trade that the ECJ cannot positions lies in an
off (essentially because mark infringed unless it make findings of fact, and interpretation of the
they had not submitted fell into sections 11 or 12 therefore that Laddie J ECJ’s decision which
any evidence of TMA. Mr Reed’s use did was entitled to ignore the Laddie had not
confusion). Mr Reed’s not fall squarely within conclusions reached by considered. The ECJ
defence to the claim for the exceptions, but the ECJ insofar as they talks of the essential
trade mark infringement Laddie J felt it unfair to were based on findings of function of the trade mark
was that his use of the hold that he infringed. He fact inconsistent with his being to guarantee origin;
Arsenal Marks did not therefore made a own. However, the Court it
Page 1 of 3
2021 ©
amount to “trade mark reference to the ECJ of Appeal held that the
use”, or use indicating hoping to clarify the findings of fact reached
Intellectual trade origin. The Trade matter once and for all, by the ECJ were not, in
Property Law Marks Act 1938 required asking: “… does the third fact, inconsistent with
trade mark use, but the party have a defence to those reached by Laddie
Trade Marks Act 1994 infringement on the J. Laddie J had held that
Case Analysis: (“TMA”), which was ground that the use there was no trade mark
based on Directive complained of does not use of the Arsenal Marks;
Arsenal v Reed 89/104/EEC (the indicate trade origin …?”, they
The long-awaited Court “Directive”), does not i.e. whether trade mark
of Appeal decision refer to the concept. was use necessary for
in Arsenal Football Club English judges have infringement of a trade
plc v Matthew Reed has therefore felt a lacuna in mark under the Directive. “would be perceived as a
finally been delivered. the law and several badge of … affiliation to
However, those who cases have considered The ECJ, unfortunately, those to whom they are
were hoping for certainty whether trade mark use did not answer the directed. They would not
in what has become a is necessary under the referred question directly, be perceived as
fraught area of trade TMA, and come to the so that its words had to indicating trade origin”.
marks law will be conclusion that it was be interpreted if an
disappointed, not least of not. There is a clear answer to the question
all because of a tension in balancing the was to be distilled.
conflicting House of interests of trade mark Laddie J considered that The ECJ had held that
Lords judgment, R v owners, who wish to the ECJ had said that the use of the Arsenal
Johnstone, handed down have the widest possible trade mark use was Marks was “such as to
the day after the Arsenal protection for their necessary in order to create the impression
decision. brands, and those of infringe a trade mark. He that there is a material
other parties, who would also found that the ECJ link in the course of
The brief facts of the wish to be able to use the had made findings of fact trade” between the goods
Arsenal case are as marks in certain which were inconsistent and Arsenal, and found
follows. Arsenal owned circumstances. with those which he had that
UK trade mark Exceptions to trade mark made at trial; since it did
registrations for infringement, such as use not have the right to do
“ARSENAL”, “ARSENAL to describe that, he could ignore
GUNNERS”, a cannon characteristics of the those findings and the “there is a clear possibility
device and a crest device product to which they are consequent conclusion in the present case that
(the “Arsenal Marks”). Mr applied, are given in reached by the ECJ, and some consumers, in
Reed had been selling sections 11 and 12 TMA, apply the guidance on particular if they come
football memorabilia but it could be argued the law, as he saw it, to across the goods after
depicting the Arsenal that certain uses fall the facts established at they have been sold by
Marks from stalls near through the gaps – they trial. He found no Mr Reed and taken away
Arsenal’s ground at may not be clearly infringement. from the stall where the
Highbury (at which infringing uses, but notice appears, may
notices stating that the neither do they fall Arsenal appealed, and interpret the sign as
products were not official squarely within the the Court of Appeal designating Arsenal FC
were prominently statutory defences. overturned Laddie J’s as the undertaking of
displayed) for around 30 decision. The judgment, origin of the goods”.
years. Arsenal sued for Laddie J, who heard the given by Aldous LJ,
trade mark infringement Arsenal case in the High considers the ECJ’s
and passing off. Court, was not decision in depth. The The key to reconciling
comfortable with the idea Court of Appeal agreed these apparently differing
Arsenal lost on passing that any use of a trade that the ECJ cannot positions lies in an
off (essentially because mark infringed unless it make findings of fact, and interpretation of the
they had not submitted fell into sections 11 or 12 therefore that Laddie J ECJ’s decision which
any evidence of TMA. Mr Reed’s use did was entitled to ignore the Laddie had not
confusion). Mr Reed’s not fall squarely within conclusions reached by considered. The ECJ
defence to the claim for the exceptions, but the ECJ insofar as they talks of the essential
trade mark infringement Laddie J felt it unfair to were based on findings of function of the trade mark
was that his use of the hold that he infringed. He fact inconsistent with his being to guarantee origin;
Arsenal Marks did not therefore made a own. However, the Court it
Page 1 of 3
2021 ©
