13.2.17

Court of Session issues judgement in 'Tartan Army' trade mark case

Image Source: Famous Tartan Army Magazine

Last week, Lord Glennie issued his judgement in the case of Tartan Army Limited v Alba Football Fans Limited [2017] CSOH 22 whereby the owners of the trade mark "Tartan Army" attempted to prevent another company using the phrase, without its permission, in publication of a magazine that offered football travel services, under the name "Tartan Army". However, the case failed as Lord Glennie ruled that the defender's magazine, The Famous Tartan Army Magazine, was not "identical" to the pursuer's trade mark and it was unlikely that fans would consider the magazine to be connected to the pursuer.

I have a look at the case and judgement below:

The 'Tartan Army' Brand & Business


The Tartan Army is the name given to fans of the Scotland national football team and first came into popular use in the 1970s. The origin and the development of the brand 'Tartan Army' was explored by Lord Glennie in determining his judgement. Although the name first came into circulation in the 1970s, no trade mark application was submitted until the run-up to the 1998 World Cup (in which Scotland qualified). It was at this point that trade marks were successfully registered for the words "The Tartan Army" and "Tartan Army", by a Glasgow businessman who was not party to the action. The Tartan Army Limited was incorporated in 1997 and the trade mark was used to produce supporter-esque merchandise including t-shirts, scarves, banners and cap as well as releasing a national team song, "Scotland Be Good". The success of the brand was limited, however, to the success of the national team and was also limited to the football season. 

In 2005, the business was approached by a Mr Iain Emerson & a Mr Tannock. The two gentlemen wanted to publish a fan-zine type magazine and ensure that there was no objection to using the trademarked phrase "Tartan Army" in the title of the magazine, 'The Famous Tartan Army Magazine'. No objection was raised and they received written consent, as The Tartan Army Limited was not involved in any written publications, at that time. Between 2005 and 2008, five issues of the magazine were published but the businessmen soon started to develop other ventures, including travel services, under the company name SFM Promotions Limited.

In May 2006, The Tartan Army Limited was sold to Robert Shields and Donald Lawson which included the right to use the trade marks. Despite the lack of success from the national football team thereafter, the company continued to pursue any improper use, with protection of the brand one of their top priorities. Whilst they did not object to local fan groups using the marks, their aim was to prevent commercial use without permission - they cited two successful attempts to prevent two breweries from using the name "Tartan Army", without permission, on products and promotions. Further, they also pointed to sponsorship agreements that had been made with Belhaven Breweries and Tennents, that allowed use of the marks.

The Dispute


Later in 2006, The Tartan Army Limited (now under the ownership of Shields & Lawson) had a meeting with Emerson & Tannock, who had contacted the company after they realised that it had changed hands and wanted to ensure that the previous agreement they had with the prior owner would not cause any issues. There was no objection from Shields & Lawson as they recognised the magazine as just a fanzine run by "fans like us".

In 2007, it was discovered that Emerson & Tannock were not only running the magazine but also providing supporter travel services, under the "Tartan Army" trade mark, to attend away-matches and making a profit from that. Travel services included train travel to a qualifying match in France and also a cruise ship trip to Amsterdam, carrying 1,600 Scotland fans. Both trips were promoted by the Scottish Sun newspaper, with the second trip being dubbed the "Tartan Army Navy II", by the paper.

Shields & Lawson were concerned as they considered that the ventures were being marketed as being a Tartan Army enterprise. Although publicity material was in the name of "The Famous Tartan Army Magazine", the words "famous" and "magazine" were in small print and therefore, in their opinion, it was only really "Tartan Army" that stood out. Given that, Shields & Lawson argued that anyone seeing it would think that it was being organised by their company, The Tartan Army Limited. This could affect the reputation of the brand if something went wrong. As a result, they sent several cease & desist letters that went ignored which resulted in Shields & Lawson issuing written notification of the withdrawal of permission to use the trade mark at all. 

Despite the above actions, Emerson & Tannock continued to use the trade marks on goods & promotional material and The Tartan Army Limited (The Pursuer) thus, raised an action in the Court of Session, against Emerson & Tannock's company, Alba Football Fans Limited (The Defender). 

The Action


The action was raised in 2009 by the Pursuer who sought the following from the Court:

  • An interdict prohibiting the Defender from infringing its trademark rights and from passing off its goods as goods sold by the pursuer;
  • An order for destruction of all products and promotional and marketing materials in the Defender's possession which uses the "Tartan Army" mark
  • Count and reckoning by the Defender for the whole profits made by them from the publication and sale of magazines and supply of travel services and other goods and services infringing the pursuer's registered trademarks and payment of the sum found due, failing which the sum of £300,000 (this head of claim was dropped at commencement of the Diet of Proof)

The defender counterclaimed and asked the Court to find that the Pursuer's trademarks were invalid under sections 3 and 47(1) of the Trade Marks Act 1994 on the basis that the phrase "Tartan Army" was "well known as a description of the travelling support for the Scotland football team" and therefore "had a very well known and widespread meaning that was not distinctive of trade origin".

Before we turn to the judgement, it is prudent to consider the purpose of trade marks as well as the what the Pursuer means when it refers to the defender as being guilty of 'passing off':

What is a trademark and what is its purpose?

A trade mark is defined as a word, phrase, symbol or design that identifies and distinguishes the source of the goods of one party from those of another. Trade marks can take a number of forms including logos, badges, names and phrases. Such an example are the crests and logos of football clubs or brand names.

The registration of a trade mark provides the owner with an enforceable right regarding use of the mark without permission. Any infringement of a trade mark allows the owner to claim compensation from the infringer (usually the profits earned from the selling of goods) and request an interdict (injunction) prohibiting further use of the trade mark, along with the destruction of counterfeit goods.

What is passing off?

The case of Perry v Truefitt (1842) 5 Beav. 66, 73 provides a good description of 'passing off' when it was stated that: "a man is not to sell his own goods under the pretence that they are the goods of another man". In order to bring a successful action for passing off, the Pursuer is required to meet a 3 stage test as set out in the case of Reckitt v Colman Products Ltd v Borden Inc [1990] 1 WLR 491 which states: (1) some goodwill or reputation must attach to the goods or services, in question; (2) there must be a misrepresentation (whether or not intentional) by the defender leading the public to believe that the goods or services offered by him are the goods or services of the pursuer; and (3) the pursuer must have suffered damage by reason of the erroneous belief endangered by the defender's misrepresentation that the source of the defenders' goods or services was the same as the source of those offered by the pursuer.

The Judgement


Passing Off

Lord Glennie accepted that the pursuer had goodwill in its goods and services promoted under the name "Tartan Army" or "The Tartan Army", however, he did not accept that there was any misrepresentation on the part of the Defender in publishing the magazine under the title 'The Famous Tartan Army Magazine' or in promoting travel services under that name. 

The reason behind that notion was that in Lord Glennie's opinion, there was no likelihood of confusion between that which the Pursuer offers and that which is offered by the Defender. There was also no likelihood of the public being deceived by the defender's use of a title which includes the words "Tartan Army. He stated: "I consider that most potential customers or consumers, being Scotland fans or, to put it in another way, members of the Tartan Army, would understand the name of the magazine to refer to them rather than a reference to the pursuer or its products."

As a result, the claim in 'passing off' failed.

Trade mark Infringement

Lord Glennie also dismissed the Pursuer's claim for trade mark infringement and placed emphasis on the word "famous" in the defender's magazine title. He said: "Long before the application for the Trade Marks, the Tartan Army was famous, in the sense that it had a nationwide, perhaps worldwide, reputation. To that extent the addition of the word 'famous' before Tartan Army is not unimportant. It is not an insignificant detail which the average purchaser of customer would not notice. In my judgement, the defender's magazine title cannot be said to be identical with the pursuer's trade mark...I would accept that the marks are similar and that the goods or services are identical or similar for the reasons set out above. But infringement [under section 10(2)(b) of the 1994 Act] requires there to be a likelihood of confusion on the part of the public from the use of the defender's sign alongside that of the pursuer, which may include the likelihood of association of the defender's sign with the pursuer's trade mark. I do not find this established. The evidence does not suggest that anyone becoming aware of the magazine would associate it with the pursuer or any of the pursuer's products bearing the words Tartan Army. Nor does it seem to me to be likely that there would be any such confusion."

Defender's counterclaim - invalid or restricted trade marks

In respect of the defender's counter-claim that the Pursuer's trade marks were invalid, Lord Glennie recognised the fact that the phrase, Tartan Army, was often used somewhat as a badge of allegiance to the Scotland football team and its fans. He held, however, that this did not preclude the Pursuer from registering the trade mark. As such, Lord Glennie rejected the defender's counter-claim that the trade marks were invalid.

Lord Glennie did, however, restrict the Pursuer's use of the trade marks by reducing the scope after he determined that there had been no genuine use for certain classes of goods including banners and flags.

Conclusions


This case is interesting and important as it not only highlights that commonly used and popular phrases, such as Tartan Army, are capable of trade mark protection but also stresses, at the same time, the difficulty that a holder may have in defending their registered property right against what they consider to be improper use. 

As Lord Glennie explained, the pursuer must be able to show that the public may be confused by thinking that there is a relationship between the brand and the goods/services complained of. The more commonly used a phrase is, the more difficult that will become and if you are unable to show confusion then you are unlikely to prove damage to reputation, as required by the legal test.

To read the full judgement, click here

IMPORTANT: This blog post is not intended as a legal briefing nor is it intended to be a statement of the law. No action should be taken without seeking specialist legal advice.






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