Trade mark use and infringement

As a matter of fact the Council Regulation 40/94[1][1] has been a recent step in the harmonisation of the trademark law within the European Union and gave the possibility of registering for a Community trade mark, able to cover the all European Jurisdictions.

Under article 9 of the above Regulation there is no evidence that for the infringement of a Community trade mark right the signs eventually used by third parties must be used as trademarks. Actually the only prescription, according to the Regulation above, is that these particular signs must be used ?in the course of trade?. The same assertion can be made for the national legislations of the European member states implemented by the Council Directive No. 89 of 1988[2][2].

The situation was very different in England some years ago. In fact until the new legislation that came in to force in 1994[3][3] a registered trade mark right was protected by infringement only if the signs described by the Statute were used ?as a trade mark?[4][4] and, obviously, in the course of trade.

As a matter of fact under the old legislation a non-trade mark use could have never constitute an infringement of a registered trade mark even if, for instance, it was able to create confusion. For this reason the concept of confusion has been related to the concept of trademark use and sometimes it was very difficult to divide the two notions.?

This rule has been followed by courts until 1994[5][5] when the English Parliament implemented the above mentioned Council Directive No. 89 of 1988[6][6] to approximate the laws of the European State Members of the Community relating to trade marks and cancelled the words ?use as a trade mark? from the prescriptions.?

The same European directive has been implemented in Italy as well, for instance, with the Decreto Legislativo?04.12.1992[7][7]?number?480?that modified the old trade mark law number 929/1942[8][8].

As a matter of fact, a Council Regulation on the Community trademark has followed this Directive in 1994. With regards to this particular subject the provisions of the Council Regulation 1994 are practically identical with the provisions of the Directive except with article 9 (1) (c) of the Regulation that corresponds to article 5.2 of the directive: this point in fact is optional in the Directive; by the way we have to note that nevertheless this point has been implemented in England by the Trade Marks Act 1994. In point of fact, taking into consideration the above there is no evidence that for the infringement of a national registered trademark right the signs eventually used by third parties must be used as trademarks. In other words it doesn?t matter if we are referring to both national or community registered trade mark: in both cases, in the European Union, theoretically even a non-trade mark use could constitute an infringement of a registered trade mark.

As we said this is theoretically possible but, in practice, how have courts reacted to this option? Do the courts still refer to the concept of trademark use? Do the courts assume that a trademark use is necessary to constitute an infringement? At this purpose we have to note that all the legislation of the European Union is based on the origin theory: as a matter of fact if a particular sign cannot create confusion with regards to the origin of a product there is no infringement. Nevertheless under the old English legislation a particular sign able to create confusion should have been used as a trademark to constitute infringement.

In effect the judges of the English courts in 1996 still referred to the concept of trade mark use: ?Looking at the label I think the average customer would not see "Treat" used as a trade mark. It is true that it is written as part of a phrase "Toffee Treat" but this is done in a context where the maker’s name is plain. … But where it is highly descriptive I see no reason why a member of the public should take the mark as a badge of origin and that is particularly so where the product is a new sort of product, as here. The public are apt to take the name of a novel product as a description rather than a trademark, particularly where the name is not fancy but is descriptive or laudatory. I do not think Robertson’s use is as a trade mark?[9][9]. By the way Jacob J. in this case expresses for the first time the idea that use of a sign in a non-trade mark way could have infringed a registered trade mark. Unfortunately as we will see the same judge in a subsequent case[10][10] expressed serious doubts about the exactness of his own opinion.

With a different approach Rattee J. in Trebor Bassett v. Football Association assumed that some kind of sign cannot even be used in relevant ways. This case was about the possibility of infringement of a registered sport trademark by the appearance of the registered logo under discussion in the photos of a sport card. In this case Rattee J. assumed: ?There is no doubt, in my judgment, in the present case, that the relevant sign is not being used by Trebor Bassett as a trade mark?[11][11]. But then continued: ?In deciding the questions before me, I consider it unnecessary, and therefore inappropriate, for me to decide whether I should adopt the view adopted by Jacob J. in the British Sugar Plc case on the question whether use of a sign, to be within section 10(1), has to be used as a trade mark. I express no view on the point. I say it is unnecessary for me to do so, because I accept the argument put forward by Mr Speck, on behalf of Trebor Bassett, that it cannot seriously be argued that by publishing and marketing, on the cards concerned, photographs of players wearing the England team football strip (including the three lions logo) Trebor Bassett is in any sense using the logo in respect of the cards on which the photographs appear. In my judgment it plainly is not. The logo appears on the card only because it is worn by the player whose photograph appears on the card as part of that player’s England team football strip, to show that the player himself is an England team player. The reproduction of the photograph on the card inevitably reproduces the England logo on the garments which the player was wearing when the photograph was taken. By such reproduction, in my judgment Trebor Bassett is not even arguably using the logo, as such, in any real sense of the word "uses", and is certainly not, in my judgment, using it as a sign in respect of its cards?[12][12]. The main concept is that definitely the sign must be used to constitute an infringement and he believed that in this particular case there was no use at all.

But Lord Mc Cluskey, in Bravado Merchandising v. Mainstream Publishing went even further: ?It had long been recognised, it was still the law, and counsel for the petitioner had accepted, that to constitute an infringement of a trade mark there had to be a use ?in the trade mark sense??[13][13]. Moreover Lord Mc Clusky referred to the Mothercare case based on the old law in which Dillon LJ stated: "In the present case the words ‘Mother Care’ in the title of the book are not, in my judgment, used as a trade mark or in any trade mark sense. They are merely used descriptively as describing, with the words ‘Mother Care’, what the book is about"[14][14]. He cited different reasons for this interpretation and to show why the idea of trade mark use as sated in Mothercare[15][15] is still alive in the present law: ?…Reference was made to the report stage of the Trade Marks Bill in the House of Lords on 24 February 1994 when the Minister, Lord Strathclyde, stated, at col 733: ?As a matter of general trade mark law it is implicit that the use of a registered trade mark must be trade mark use in order that the rights given by the Bill may be enforced. The contents of the fifteenth recital to the directive also make that quite clear??[16][16]. And the reference to the directive and in particular to the origin theory of trade marks can be, in his opinion, quite helpful to justify the necessity of a trade mark use[17][17]. Again the models of the origin theory are used to find a reason about the existence of the trademark use.

We have to go to France to find out that the French Cour de Cassation took a position on this subject in refusing to agree that the word ?visa? used in a slogan infringed the well known credit card mark. In particular: ?…the word VISA, blending into a whole, is taken in the everyday sense of "passport". The Cour d’Appel, which deduced from this that the addition of these expressions was outside the scope of infringement…?[18][18]. This way of thinking is very similar in my opinion to the assumptions of Lord Mc. Clusky in Bravado Merchandising v. Mainstream[19][19].

In Luxembourg the Benelux Court of Justice applying the Uniform Benelux Trade Mark Act[20][20] confirmed a similar approach in asserting that: ?the simple use of a business name by a business providing services, to supply or provide those services must not be regarded as constituting the use of a trade mark for services identical to this business name or the use of a similar sign. It may however be otherwise and the use is the same if, in fact, the business name is used in such a way that the public believes this use of a sign to be serving to distinguish the services offered or provided from those of another?[21][21]. In this particular case there is one more time a significant reference to the origin theory and the Benelux Court of Justice sentenced that a bank, using the same name of another bank, would infringe the mark of the second one only if it used the mark to differentiate some particular services. Otherwise there is not confusion and, if there is not possibility of confusion, the origin theory says that there is no infringement.

In Philips Electronics v. Remington the defendant ?suggested that the requirement of trade mark use (i.e. to denote trade origin) was implicit in the Directive’s infringement provisions?[22][22] and Jacob J., after expressing serious doubts about the correctness of his previous opinion in British Sugar v. Robertson[23][23], determined that the question was not necessary in the case to decide the point.

Moreover, in the Court of Appeal Aldous L.J. stated: ?For my part I prefer the submission of Philips that found favour in the British Sugar case, namely that trade mark use is not essential. There is nothing in sections 9 or 10 which requires an infringing use to be trade mark use and section 11(2) (Article 6) contains a comprehensive list of the exclusions that were thought appropriate?[24][24]. This can be considered a real revolution and in effect for the second time an English judge assumes that the requisite of a trademark use is not essential anymore under the present law. Luckily this judge has not yet changed his opinion!

The following year the Court of Justice of the European Communities has examined this case[25][25] but unfortunately Advocate General Ruiz-Jarabo Colomer didn?t answer the question of the trade mark-use. In his opinion there was no need to determine this important point because there was a different and simpler way to decide the case.

Taking into consideration what we have seen until now the question is still unanswered. The English Judges have been talking about trade mark use, they referred to cases from the old legislation but they didn?t give us a certain answer and, as far as I know, the question is still unanswered in all others countries of the European Union.? Furthermore in England as we have seen the same judge gave different opinions in two different cases. After Philips Electronic v Remington[26][26] things could have been changed but we still don?t have a real precedent. In fact the Court of Justice of the European Community, which will clarify the law and bind the member states, must decide the matter.

As we have noted in most of these cases ?the courts display a natural reluctance to prevent one trader from employing a word or other sign which corresponds to another?s mark in where potential damage and undue misappropriation appear equally slight. They display a firm sense that marks are to be protected for their value as indications of origin?[27][27]. It is my particular opinion that the concept of trademark use is not necessary anymore to regulate trade mark infringement. In fact the origin theory can adequately fulfil this purpose: if a sign is able to create confusion about the source of a product there is an infringement even if it is not considered a trademark use.

A particularly important case is Arsenal Football Club Plc v. Reed[28][28] that may even become the case to solve the shed light to the present confusion. This case requires particular attention: the Claimant, Arsenal football Club, brought proceedings for passing off and trade mark infringement of its registered trade marks ?ARSENAL? and ?GUNNERS?. Arsenal Football Club derived significant profits from sales of souvenirs and memorabilia of the ?official? Arsenal Football Club. The defendant, Mr Matthew Reed, is a self-employed proprietor of a wholesale and retail football merchandise company. He started his business in the early 1960s and he is still selling souvenirs and memorabilia, which are probable to appeal to Arsenal supporters. The Claimants brought the proceedings to stop the Defendant from allegedly infringing their trademarks on unofficial goods.

As we have noted above, the concept of infringement was based on the origin theory; Mr Reed, to prevent any possibility of confusion put on his stall a big warning which carried the following note: ?THE WORD OR LOGO(S) ON THE GOODS OFFERED FOR SALE, ARE USED SOLELY TO ADORN THE PRODUCT AND DOES NOT IMPLY OR INDICATE ANY AFFILIATION OR RELATIONSHIP WITH THE MANUFACTURERS OR DISTRIBUTORS OF ANY OTHER PRODUCT, ONLY GOODS WITH OFFICIAL ARSENAL MERCHANDISE TAGS ARE OFFICIAL ARSENAL MERCHANDISE"[29][29]. In effect Laddie J. assumed: ?In my view, on a balance of probabilities, the reason that AFC has been unable to produce instances of actual confusion caused by Mr Reed’s sales over the last 31 years is that no such confusion has taken place. I find it difficult to believe that any significant number of customers wanting to purchase licensed goods could reasonably think that Mr Reed was selling them, save when they are expressly so marked. It seems to me that the use of the Arsenal Signs on Mr Reed’s products carries no message of trade origin?[30][30]. Sometimes the concept of trade mark use has been misunderstood with the concept of confusion and it was said that where there is a possibility of confusion there is a trade mark use. The reason why this case is so important is that for the first time it has been clearly asked to a court if, where and how a non-trade mark use can constitute an infringement of a registered trade mark. In effect with the only exceptions of Philips v. Remington[31][31] and British Sugar v. Robertson[32][32] the concept of trade mark use has always been in relation with the concept of infringement. It has been said that only a trademark use is able to create confusion and in consequence of this an implicit requisite of trademark use has been created with the scope of protecting the old case law.

In an interesting passage Mr Justice Laddie emphasized the lack of certainty in the decisions about this particular topic: ?The effect of this drafting has been considered on a number of occasions in the English courts. In British Sugar Plc v. James Robertson & Sons Ltd, Jacob J. expressed the view that use of a sign in a non-trade mark way could infringe a registration. He appears to have had doubts as to the correctness of that view in Philips Electronics Ltd v. Remington Consumer Products. However, the same conclusion was arrived at by the Court of Appeal in the latter case?[33][33]. But then he assumed the good law of Philips in Court of Appeal and underlined the importance of the role of the House of Lords and of the European Court of Justice: ?Notwithstanding… I am not persuaded that I should take a different course to that adopted by the Court of Appeal in Philips. The Court gave full consideration to the issue of whether infringing use had to be used in a trademark sense and came to a conclusion that it did not. It is not for the High Court to ignore this decision. If a different view is to prevail it must be expressed by the House of Lords or, preferably, the European Court of Justice?[34][34]. In effect he agreed about the fact that the law in this point is unclear and it is not settled yet and requested the final result of the European Court of Justice: ?The final outcome of the claim of infringement… must depend on the final resolution of this point of law by the European Court of Justice?[35][35]. We hope that in this case the European Court of Justice will resolve this issue in its decision.

At the moment we don?t know to what extent a non-trade mark use can constitute an infringement of a registered trade mark because the law is not really clear in this point. It is my personal opinion that in Arsenal case Mr Justice Laddie offered the best conclusion: ?If the view of the Court of Appeal in Philips[36][36] prevails, there is no doubt that Mr Reed infringes. On the other hand, if a sign must be used as a trade mark before it can infringe, Mr Reed does not infringe?[37][37].

We must wait.

(scritto nel 2002)

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?Marco Pistis, LL.M.
Avvocato

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SOURCES CONSULTED

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CASES

Arsenal Football Club Plc v. Reed [2001] R.P.C. 46 922.

Bravado Merchandising Services Ltd v. Mainstream Publishing (Edinburgh) Ltd [1996] S.L.T. 597.

British Sugar v. James Robertson [1996] R.P.C. 281.

Europabank N.V. v. Banque pour l’Europe S.A. [1997] E.T.M.R. 143.

Mothercare (UK) Ltd v Penguin Books [1988] R.P.C. 113 CA.

Philips Electronics NV v. Remington Consumer Products Limited [1999] E.T.M.R. 816.

v. Remington Consumer Products [1998] R.P.C. 283.

Trebor Bassett Limited v. The Football Association [1997] F.S.R. 211.

Visa International (U.S.) v. Editions Jibena [1998] E.T.M.R. 580.

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STATUTES

Trade Marks Act 1994 Chapter 26.

Trade Marks Act 1938 Chapter 22.

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EU AND FOREIGN LEGISLATION

Uniform Benelux Trade Mark Act (UBTA) 1962 as implemented.

Italian D. Lgs. n. 480/1992.

Council Regulation (EC) No 40/94 of 20 December 1993.

Council Directive No. 89/104/EEC of 21st December 1988.

Italian Legge n. 929/1942.

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BOOKS

CORNISH William Rodolph, Intellectual property: patents, copyright, trade marks and allied rights (London: Sweet and Maxwell Limited of, 1999).

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