Tartan Army scores own goal?

The defendants' magazine

Via Katfriend Gill Grassie (Brodies LLP) comes a trade mark story from Scotland, that tells the tale of the trade mark ‘Tartan Army, its alleged infringement, and the resulting decision by the Court of Session. The case is Tartan Army Ltd v Sett GmbH and Others [2017] CSOH 22. 

Here’s what Gill writes:

“This was a trade mark/passing off case relating to UK and EU registered marks ‘Tartan Army’ (the Mark) decided just last week by the Court of Session in Edinburgh.

It has all the ingredients of a hard-fought football match between two rivals determined to get the better of each other.

It involved numerous tactical moves, lots of emotion, a few penalties, many injuries and stoppages, extra time and ultimately an own goal just before the final whistle.

The stakes

The ‘honourable referee’ was Lord Glennie, who is an IP designated judge in the Court of Session.

Ultimately, this referee decided there was no infringement or passing off and that a number of trade marks in various classes should be revoked or specifications restricted. 

The case started as long ago as 2009. Now, on the face of it, that seems an inordinately long time to reach what is only the first instance decision. The case rather surprisingly was not brought as an IP case and so was not dealt with under the strict IP case management rules. In addition, it was stayed for a period of a whole 4 years from 2010 to 2014. The lack of any case management followed by this long stay contributed to the delays and only when the case was ultimately transferred to the IP procedure was any swift and focused progress really made. 

Despite the obvious determination by both sides to see this through, there was not a huge amount at stake. The claim for damages and net profits was dropped - probably because the Mark had not been particularly successfully exploited – and the only claims were for injunctive relief (interdict), destruction of infringing materials and expenses/costs. 

The marks

The pursuers (claimants) owned  a number of UK and EU registered marks in respect of the Mark. It seems that some of the more relevant EU trade marks were allowed to lapse in error along the way with applications for new ones, in exactly the same classes, being made as late as May 2016. After a non-use attack ultimately, the only relevant ones left standing in the trade mark team were those in classes 25, 32 and 41. 

Notably there was only one UK valid trade mark in class 25 (articles of clothing, headgear, footwear etc). There were valid EU trade marks however for all three of the relevant classes. [Class 25 being for articles of clothing, headgear and football strips, Class 32 for beers, minerals and aerated waters and other non-alcoholic drinks … Class 41 for publishing services; on line publishing, the provision of on line and electronic publications and digital music, entertainment, sporting and cultural services, information and advisory services related to all of these.]

A tartan army

The beautiful game?

The case did not ultimately turn any issue on disputed facts. Rather it was all about the law as applicable to those facts, ie the rules of “the beautiful game” of trade mark law! 

Just about every point imaginable was argued. 

The pursuers were successors in title to the Mark with first dated UK registration being in 1996. The mark was filed in numerous different classes with widely drafted specifications. Perhaps the zenith of its use was in 1998 coinciding with that 1998 World Cup. It was used for fan merchandise and a few licenses were granted but the commercial results were not great. Use was sparse and intermittent but not commercially significant since around 2008. It had only been used in classes 25, 32 41- albeit not across the full width of the specifications, since 2010.

Personal bar/consent (estoppel) – the first goal to the pursuers’ team!

The defenders were publishers of a magazine called, “The Famous Tartan Army”.  They had approached the then owners of the Mark in 2005 for permission to use the name ‘Tartan Army’ to produce a magazine. An email had been sent on behalf of the then owners on 2 September 2005 authorising use for a magazine called, “The Famous Tartan Army”. Nothing was said in the email as to whether this authorisation  was revocable or not. The pursuers in the action had purported to terminate any informal licence which may have  been granted by that email, by a subsequent email of 31 July 2008. The defenders attempted to rely upon personal bar/consent (estoppel) to argue reliance on the original email granting consent such that it could not later be cancelled. However, this was undermined by evidence that the defenders had already begun to prepare to use the Mark for a magazine with the relevant title in 2004/05.

The judge indicated that he had no doubt that even if the defenders had not received the original email, they would have carried on in any event and used the name for that purpose. In addition, permission, unless otherwise stated, could be revoked on reasonable notice, which would be determined by the specific circumstances. Here notice had been given in July 2008 via the relevant email and the action was not started until 2009. This was more than sufficient time here. 

Also any licence in the 2005 email was personal and not transferable and the owners of the Mark had changed through assignations etc since then. Further the decision to revoke the licence in the later email only came about in light of concerns that the defender’s use was going beyond mere production of a magazine in any event. 

Thus this argument was rejected.

Validity - a draw?

There was also a validity challenge on two main grounds – absolute grounds of refusal and non-use for five years.

The former attack was based on an argument that the trade mark was incapable of distinguishing goods or services etc. Section 3(I)(a)(b)(c) and (d) of the UK Trade Marks Act 1994 were all relied upon. 

The ‘honorable referee’ blew the whistle on this pretty quickly!

Even if the Mark would have generic meaning for the mass of Scotland’s football fans, it could still be distinctive in the sense of being capable of identifying goods or services for which the trade mark was registered as coming from a particular undertaking as opposed to identifying the actual undertaking as the source. That dealt with (a) and (b). Also the fact that the term might often be used as a badge of allegiance to the Scottish Football Team (the Arsenal and Tottenham cases etc) would not prevent its registration as a trade mark.  As (c) and (d) were merely specific instances of lack of distinctive character, these grounds were also dismissed accordingly. 

There was also an argument of 5-year non-use which was a little more successful, with the registered trade marks in classes 24, 27 and 35 all being deleted. This left only classes 25, 32 and 41 standing but with some restrictions to the specifications. 

There was a very interesting argument by the pursuers as an attempt to fall within the exception to non-use by trying to establish that there were proper reasons for it. This was, as the judge put it, “the ebb and flow of the fortunes of the Scottish Football Team (presently more ebb than flow) made it perfectly reasonable for the pursuer to seek a wide protection for the Mark without actually making use of the Mark in relation to items such as carpets, which were only likely to be marketable as and when the Scottish Football Team qualified for a major championship.  This applied across the whole range of classes protected by the trade marks – the larger and/or more expensive the item, the more justification there was for putting off use of the trade mark in relation to the use of that item until the national team enjoys greater success.  He compared the situation to that of World Cup Willie, a Mark in respect of which the Court had accepted that it was reasonable not to have used it for many years.”

However the referee in this instance did not accept that comparison and made the point that World Cup Willie was specifically linked to the success of the English football team on home soil in 1966 and commented that, “it was not surprising that it will have lain dormant for many years since then without that non- use necessarily resulting in revocation.”

Don't overlook the importance
of (case) management

In contrast, the judge remarked that the Mark here had “never specifically attached to one particular occasion” and that the use had been continued in certain respects in relation to clothing and a website despite the lack of success of the Scotland football team.  It was not the case that the Mark’s use had been put into abeyance awaiting the prospect of future success. This argument therefore also failed dismally.

The ultimate own goal?

All of the above was however in vain as the ultimate own goal was that what was left of the pursuers’ brand armoury was held not be infringed.  It was decided very briefly by the judge that there was no infringement or passing off.  The marks were not identical given the use of the qualifier ‘Famous’ which was more than just a mere descriptor. Whilst the marks were similar and  in so far as use for a magazine was concerned  fell within class  41 there was no likelihood of confusion or evidence of such.  There was also a case argued for infringement by use for travel services but the relevant EU trade mark was no longer in play so it was dismissed.

Furthermore, it was not a well-known trade mark under Section 10(3).  For similar reasons, the case on passing off also failed.

Injury time and to appeal or not to appeal?

We are now in the long overdue period of injury time and it remains to be seen if the pursuer will still have sufficient passion (not to say the funds) to lodge an appeal.

Lessons learned

The case got off to a bad start by not being designated as an IP case.  Doing so at the outset would have avoided long delays and considerable (no doubt) wasted costs. The IP Court Rules and Procedure offer very close and strict case management of the proceedings  from the earliest possible stage – ie within just over a month of the case being started. Use of these rules would have kept expenditure and time under control, and added  considerable focus to the action. 

Secondly, use your registered trade mark!

Thirdly, don’t fight for the sake of it, especially when the tide is ‘ebbing away’ rather  rapidly. 

Of course had the Scottish National team been playing in better form over the period in question things might have turned out quite differently …”