*Written for and published by Sports Law, Administration & Practice, May/June 17*
Introduction
The curtains closed this month on another
exciting season in Scottish football, with far too many highlights to be able
to report on them all. The top flight of the SPFL saw the return of
Rangers FC who after 5 years out of the Ladbrokes Premiership secured the third
spot and with it a return to European football, on their first
attempt. Aberdeen FC landed second spot with a record points total,
also securing European football along with St Johnstone. Glasgow's
third team, Partick Thistle, finished in the top six for the first time in
their history.
Whilst this season was always going to be
a special one for Scottish Champions, Celtic, who marked the 50th anniversary
of the greatest story in Scottish football (the Lisbon Lions of 1967, who won
the European Cup) - the current team led by Brendan Rogers in his first season,
also made their own mark in history by completing the domestic season with an
"invincible" unbeaten treble-winning team. The SPFL itself is
going from strength to strength, with reports of greater competitiveness across
all four leagues each season, attendances at fixtures growing per year and
clubs enjoying more significant TV exposure and increased commercial value.
The season was positive for many clubs
across all four leagues of the SPFL, with play-offs playing a key role in
keeping the interest alive to the final day of the season. Celtic, Hibs,
Livingston and Arbroath won the four Ladbrokes titles; Dundee United won the
Irn-Bru Cup but narrowly missed out on promotion (whilst Hamilton maintained
their place in the elite with a narrow victory in the second game of the final
play-off match) whilst Ross County's development squad won the SPFL development
league.
However, it was not just the SPFL members
who were busy in season 2016/17. The Scottish FA's judicial panel and
other legal forums were also busy with their own Scottish football-related
jurisprudence, with the judicial panel meeting almost on a weekly basis to
determine cases and keep the game well governed.
The
Cases
The Scottish FA's (SFA) Rules on Gambling
Maintaining and protecting the integrity
of sport is central to rules prohibiting gambling by sportspeople. The topic of
integrity is increasingly being subjected to critical examination and analysis.
All sport organisations require to work hard to ensure that their sports remain
a true sporting contest, with the winner declared only following a fair contest
on a level playing field. Organisations are focusing ever more on ensuring that
their participants are beyond reproach and held to the highest standards of
behaviour, for the good of the sport as a whole. In this article, we take a
look at the past football season and the gambling cases that have attracted
attention.
The SFA’s rules on betting can be found in
its General Disciplinary Rules at rule 31 (cf Articles of Association, article
26.1), which states: “No club, official, Team Official or other member of Team
Staff, player, match official or other person under the jurisdiction of the
Scottish FA shall gamble in any way on a football match.” Over the course of
season 2016-17, the SFA’s Independent Judicial Panel determined a number of
gambling-related cases in response to this absolute prohibition, following
various reports and evidence received of alleged breaches.
Joey Barton – Former Rangers FC player
Joey Barton was one of the first to be
sanctioned for gambling offences in season 2016/17. He was alleged to have
placed 44 bets between 01 June 2016 and 15 September 2016. It was not alleged
that any bets were placed on or against his own team - at that time, Rangers
FC. As such, Barton was charged with a breach of Disciplinary Rule 31, in
October 2016.
The complaint against Barton was upheld
and a one-match suspension was imposed. At that time, Rangers FC had
already terminated Barton’s contract and it was widely anticipated that
Barton's intention was to return to English football. [1]
Unfortunately for Joey, his return to England didn't go as planned and his
punting activities led to a further ban before the FA's
authorities.
Dean
Brett – Former Cowdenbeath FC Player
In
early 2017, Dean Brett became the subject of a complaint by the SFA Compliance
Officer following reports that he had allegedly placed 6369 bets, of which 65
were placed on matches involving his own club, including 8 in which he bet that
the team would lose. Brett was suspended for seven matches, four of
which were to be served immediately and the remaining three suspended, pending
any further breaches of Rule 31.
The
incident resulted in Brett losing his position at Cowdenbeath after the club
found him guilty of misconduct, as a result of a breach of their own conduct
rules. Brett’s contract was due to expire at the end of the season and the club
confirmed that they would honour his salary up until that time, on the basis
that he sought assistance and treatment for any gambling addiction.[2]
Lewis Horner
In the recent case of Lewis Horner, the
SFA opted for a different approach in its sanctioning for breaches of the
gambling rules. Horner faced a disciplinary tribunal after it was
alleged that he placed bets between 01 July 2011 and 30 June 2012, as well as
between 01 July 2016 and 01 May 2017. For the bets placed between
2011 and 2012, it was alleged that a total of 12 bets were placed upon football
matches and of those 12 bets, two accumulator bets were placed against Horner's
own club. With regards to the bets placed between 2016 and 2017, it
was alleged that Horner had placed a total of 343 bets upon football matches
with one accumulator bet placed against the player's own club.
Horner admitted the charges against him
and the SFA imposed an eight match suspended ban. The ban was suspended on the
following conditions and will only be triggered if Horner fails to comply:
- Horner does not breach Disciplinary Rule 31, or any other disciplinary rule of the SFA associated with gambling upon football, at any time prior to 30 November 2018;
- Horner attends for treatment, support or counselling at NECA Gambling Services, or another organisation providing similar services, for a minimum of one year from 01 June 2017, and that he co-operates with such services as they determine to be appropriate;
- Horner produces to the Tribunal on 30 November 2017, and thereafter also upon 31 May 2018, a report from the organisation that he has been attending with in relation to the treatment and support of any gambling addiction. The report should confirm both Horner's attendance and co-operation with the counselling.
In direct contrast to a recent decision of
its English counterpart, the judicial panel by adopting this alternative
approach, chooses to promote the aim of supporting players by imposing a suspended
playing ban on the basis that the offending player attends for counselling and
treatment, the progress of which will be closely monitored by the SFA to ensure
that it is effective. This not only supports the player but also affords them a
second opportunity to prove themselves by continuing with their professional
development and of course footballing career. Lengthy bans can see players
struggle to get back into first team football and therefore, such an approach
is welcomed, where there is no evidence of match (or spot) fixing.[3]
Henry
McClelland - Chairman of Annan Athletic Football Club
It
is not just players who have been subject to proceedings; the Chairman of Annan
Athletic Football Club, Henry McClelland, has been found to have placed
numerous bets upon football matches. McClelland was alleged to have
placed the following bets:
- Between 01
July 2011 and 30 June 2012, 226 bets were placed, 40 of which were placed
upon matches in which Annan Athletic were playing, including one which
placed against the club.
- Between 01
July 2012 and 30 June 2013, 745 bets were placed upon football matches of
which 97 featured bets upon matches in which Annan Athletic were playing,
including 2 bets which were placed against the club.
- Between 01 July 2013 and 30
June 2014, 750 bets were placed upon football matches of which 96
were placed upon matches in which Annan Athletic were playing.
- Between 01
July 2014 and 30 June 2015, 964 bets were placed upon football matches of
which 68 bets were placed upon matches in which Annan Athletic were
playing, including 1 bet against the club.
- Between 01
July 2015 and 30 June 2016, 1033 bets were placed upon football matches of
which 90 bets were placed upon matches in which Annan Athletic were
playing.
- Between 01
July 2016 and 01 May 2017, 293 bets were placed upon football matches of
which 39 bets were placed upon matches in which Annan Athletic were
playing.
The
breaches were admitted by Mr McLelland and the tribunal imposed a £3,000 fine.
£1,000 of the fine is payable within 30 days of the hearing date (01 June 2017)
and the remaining £2,000 is suspended until the end of season 2017/2018. The
suspended figure will only take effect in the event that Mr McLelland is found
in breach of Disciplinary Rule 31, or any other disciplinary rule of the SFA
that relates to gambling upon football, any time during that time period.[4]
Some may say that the prohibition on
gambling advocated by the SFA is too tough, but in reality it is a small price
to pay for being involved in the elite end of our national sport. The rules are
strict and protect the integrity of football beyond all else, applying to
everyone involved in or formally connected to football, covering all bets, on
all leagues, worldwide. While the sanctions may be wide ranging and are imposed
at the discretion of the panel, the volume of bets and whether the bets
involved the individual’s own club are significant features influencing the
outcome of any proceedings. Whether we will see more disposals in which
education and rehabilitation are promoted, rather than punitive playing or
financial elements, will depend on whether more cases come to light. Hopefully
the recent cases serve to educate and warn against punting when participating
in elite sport.
Misconduct
Members
of the SFA are duty bound to follow the national association’s rules on conduct
at all times. The rules apply to those connected with football and include
members of club team-staff and of course, players. Season 2016/17 saw a
number of incidents whereby managers and clubs received sanctions following a
breach of the conduct rules, during fixtures.
Disciplinary
Rule 203 has been cited on occasion by the SFA’s compliance officer and
complaints, arising from a breach of that provision, upheld by its independent
judicial panel. Rule 203 states:
“No
member of Team Staff shall commit Misconduct at a match, including but not
limited to committing acts of the kind described in the Schedule of Offences in
Annex C (including where there is aggravation by any factor, including but not
limited to prolongation of the incident; combination of different offences;
continued use of offensive, abusing and/or insulting language and/or behaviour;
calling a match official a cheat and/or calling a match official’s integrity
into question; failure to comply with a match official’s requests; adoption of
aggressive behaviour towards a match official; any racist, sexist, sectarian
and/or otherwise discriminatory element; and the degree of any physical
violence), breaching the Post Match Protocol, committing Unacceptable Conduct
or otherwise acting in breach of the Laws of the Game.”
Further,
Disciplinary Rule 204 provides for sanctions involving mass confrontations
amongst players, of opposing teams. Sanctions are likely to be imposed where
there are:
“…
three or more players and/or members of Team Staff from one team are involved
in a confrontation with opposing players and/or members of Team Staff of the
opposing team during and/or directly after a match.”[5]
Jim
Duffy & Neil Lennon - Hibernian v Greenock Morton, 29 March 2017
In
the above fixture, a confrontation involving players from both sides erupted
during injury time after a reckless tackle by Morton player, Kudus Oyenuga on
Hibernian's Jordan Foster. The incident also saw managers, Duffy and Lennon,
come face to face in an aggressive verbal confrontation that threatened to turn
physical resulting in both managers having to be pulled apart, whilst Morton's
Assistant Manager was also caught up in the confrontation. Duffy was
charged with a breach of Disciplinary Rule 203 (noted above) that relates to
misconduct. He admitted the charge and a 3 match suspension was imposed (the
first two matches to be served immediately with the one match to take effect in
the event of a further breach of misconduct, suspended until the end of
calendar year 2017).
Greenock
Morton were charged with a breach of Disciplinary Rule 204 in that on or around
the 93rd minute of the fixture, three or more players and/or members of the
team staff from the club, were involved in a confrontation with opposing
players and/or members of team staff. The charge was admitted by the club and a
£750 fine was imposed (£500 to be paid immediately, with the remaining £250
only payable should there be a further breach of disciplinary rule 204,
relating to misconduct, suspended until the end of calendar year 2017).[6]
Neil Lennon was also charged under
Disciplinary Rule 203 for his role in the confrontation and was sanctioned with
a 4 match suspension, 2 of which were immediate and the other two matches
suspended until 31 December 2017, only to be triggered upon further breaches of
the conduct rules before that date. Hibernian FC, like Greenock Morton,
were charged under Disciplinary Rule 204 and was subject to a £750 fine, £500
of which was payable within 3 days of the hearing date and £250 suspended until
31 December 2017, pending any further conduct breaches.[7]
Mark
McGhee (Motherwell FC) – Conduct towards match officials
In
a fixture between Aberdeen FC and Motherwell FC on 15 February 2017, Motherwell
Manager, Mark McGhee, vented his frustrations, in an aggressive manner, towards
a match official during the second half of the game. The SFA’s rules on
conduct are clear in that offensive, abusive, insulting language and/or
behaviour will not be tolerated towards match officials. Such behaviour is also
caught under Disciplainary Rule 203.
McGhee
was charged with a breach of the rule in that he:
- on or around the 59th minute of the said match used offensive, abusing and/or insulting language and gestures towards a match official, and/or
- on or around the 60th minute of the said match adopted aggressive behaviour towards a match official
McGhee admitted the charge and was sanctioned with a five-match suspension, served immediately. The sanction was set as a result of previous breaches of rule 203 in season 2016/17, notably in November 2016 whereby the charges again related to match officials and also a steward (3 match suspension, 2 to be served immediately with the one match suspended until the end of the season, pending further breaches of the conduct rules).
Behaviour
of Supporters
Scottish
Cup Final 2016 – Hibernian FC v Rangers FC
The
Scottish Cup Final was a historic monumental event for Edinburgh based football
club, Hibernian FC. For the first time in 114 years, the club went on to win
the Scottish Cup. A large number of Hibernian FC fans invaded the pitch running
up towards the players. Thereafter, a lesser number of fans of Rangers FC
also entered the pitch. Both sets of supporters remained on the pitch for a
lengthy period of time before Police Scotland and stewards were able to clear
them.
Following
the event, the Scottish FA lodged a complaint against both clubs under Rule 28
of the Scottish Cup Rules and Disciplinary Rule 311, citing damage sustained to
the national stadium, Hampden Park.
Hibernian
FC Complaint:
"In
that at the above match you failed to adhere to the Cup Competition Rules,
specifically Rule 28 of the Rules of The Scottish Cup. That at the above match
damage was sustained to Hampden Stadium, being the stadium where the Scottish
Cup Final was played, as a consequence of misbehaviour by supporters of your Club.
That the misbehaviour by your supporters occurred at the conclusion of the
above match, whereby a number of your supporters carried out an incursion onto
the pitch, and thereafter remained upon the pitch until cleared by Police
Scotland and Stewards. That in the course of this misbehaviour by your
supporters damage was sustained to the stadium, as follows:
1.
To the surface of the pitch, portions of
which were removed; and/or
2.
To a set of goal posts which were broken
and had netting removed; and/or
3.
To parts of the LED advertising system
situated at the perimeter of the pitch, in the vicinity of both the East Stand,
and/or the North Stand; and/or
4. To advertising hoardings situated at the
perimeter of the pitch, in the vicinity of the East Stand."
Rangers
FC Complaint:
"In
that at the above match you failed to adhere to the Cup Competition Rules,
specifically Rule 28 of the Rules of The Scottish Cup. That at the above match
damage was sustained to Hampden Stadium, being the stadium where the Scottish Cup
Final was played, as a consequence of misbehaviour by supporters of your Club.
That the misbehaviour by your supporters occurred at the conclusion of the
above match whereby, following on from a pitch incursion by supporters of
Hibernian FC, a number of your supporters also carried out an incursion onto
the pitch. That thereafter supporters of your Club who had engaged in the pitch
incursion remained upon the pitch until cleared by Police Scotland and
Stewards. That in the course of this misbehaviour by your supporters damage was
sustained to the stadium, as follows:
- To parts of the LED advertising system situated at the perimeter of the pitch, in the vicinity of the North Stand and /or the West Stand; and/or
- To advertising hoardings situated at the perimeter of the pitch, in the vicinity of the West Stand."
The
Hibernian complaint was heard firstly by the independent judicial panel, with
the Rangers complaint on-hold pending the outcome of the Hibernian case.
In determining its decision, the panel required to analyse the complaint
and the rules of which the Compliance Officer of the SFA sought to rely upon,
in bringing the complaint. Disciplinary rule 311 states that all clubs,
officials, players or other persons under the jurisdiction of the Scottish FA
shall adhere to the Cup Competition rules.
Rule
28 of The Scottish Cup rules state:
"Disorderly
Conduct
The
clubs are responsible for the behaviour of their players, officials, members,
supporters and any person carrying out a function at a match on their behalf.
In
the event of damage being sustained to a stadium where a tie in the Competition
is played as a consequence of misbehaviour by a player, official, member,
supporters, or any other person acting on behalf of or associated with a club,
then that club shall be responsible for any costs arising in the reparation of
same.
The
Scottish FA shall have the power to request such reports as may be necessary in
determining responsibility for restitution and may additionally through the
Judicial Panel impose upon any club a censure, fine, ejection from the
Competition or suspension if, in the opinion of the Judicial Panel a stadium is
the subject of damage by that club’s representatives or those associated with
it (Rule 6 refers).
The
provisions of this Rule 28 are without prejudice to the terms of Article 28,
which apply to clubs in the context of their participation in the Competition.
Any infringement of that Article also can lead to serious sanctions as set out
in the Articles including ejection from the Competition."
Further,
under Rule 34 of the Cup rules, disciplinary action can be taken by the
Compliance Officer where the above rules have been infringed. The panel
initially noted that Rule 28 imposed an obligation on a club to pay
compensation for damage that occurred in a stadium during a Cup fixture, where
that damage was caused by anyone 'associated with' the club. However, the panel
also noted, to their surprise, that there had been no demand for payment in
relation to the damage caused.
Whilst
it was accepted that the rule imposes a liability onto a club to pay
reparation, the Compliance Officer submitted that it also triggered
disciplinary action, under strict liability. Following that argument, the
judicial panel considered it prudent to distinguish Rule 28 from the provisions
contained in Article 28 which imposes sanctions in the event of adverse fan
behaviour:
"28.
Responsibility
of Clubs / Behaviour of Spectators
28.1
A club shall take all such steps as are reasonably practicable to ensure the
safety, good conduct and behaviour of its supporters on any ground. A club
playing at its own ground or allowing its ground to be used for a match in
which it is not participating shall also take all such steps as are reasonably
practicable to ensure the safety, good conduct and behaviour of all spectators
at that ground. "
The
Panel concluded that Article 28 provided the club the opportunity to put
forward a defence where they can show that they had taken all steps reasonably
practicable to ensure the good conduct and behaviour of its supporters. In
direct contrast, Rule 28 does not provide the club the opportunity to put
forward a defence. The Panel dismissed the complaint against Hibernian
FC, as being irrelevant:
Disciplinary
action was brought under Rule 34 on the basis that the club had failed to
comply with Rule 28. However, the panel stressed that in relation to Rule 34,
it was essential that clubs understood what should be done or not done to avoid
an infringement – this may be straight forward in cases of not registering team
colours or providing a team sheet to officials. However, in this particular
case, where the Compliance Officer was attempting to impose strict liability,
the Panel was not satisfied that the provision was clear and unambiguous. It
referred specifically to a Scottish FA Board meeting in June 2013, where
the clubs 'emphatically rejected an amendment of Article 28 which have given
rise to strict liability by providing that clubs 'ensured' the 'good conduct'
of the supporters 'in any ground'.
The
Panel asked the question – 'what should the club have done or not done to avoid
an infringement of Rule 28?' The panel was unable to answer the question and
concluded that the club was unable to take advantage of the 'reasonably
practicable' available to them, as a result. As a result of (1) the
rejection of strict liability by the clubs in 2013, (2) the development of the
rule which appeared to overlook the disciplinary framework and (3) the apparent
impossibility for a club to 'head off' disciplinary complaints under the rule,
the complaint was dismissed.[8] The complaint against Rangers FC was
withdrawn accordingly.
Intellectual Property
Tartan Army Limited v Alba Football Fans
Limited & Others
In February 2017, 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.
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.
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 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".
Judgement
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.
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."
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.
This case highlights that commonly used
and popular phrases, such as Tartan Army, are capable of trade mark protection
but also provides a warning, at the same time, the difficulty that a holder may
face 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.
FIFA Sanctions on SFA
In December 2016, FIFA sanctioned the
Scottish Football Association for wearing armbands that depicted a poppy,
during their World Cup qualifier match with England. Under Law 4 of FIFA's
Laws of the Game, equipment must not have any political, religious or personal
slogans, statements or images. Players must not reveal undergarments that show
political, religious, personal slogans, statements or images, or advertising
other than the manufacturer`s logo. For any infringement the player and/or the
team will be sanctioned by the competition organiser, national football
association or to be justified by FIFA. As a result, football’s world
governing body, fined the national association the equivalent of £15,700 citing
a breach of the above rule regarding political statements and also for fan
misconduct, understood to be in relation to the interruption of the English
national anthem, God Save the Queen. Sanctions were also imposed on the
English FA and Welsh FA, also for the display of the poppy during
fixtures. The SFA have lodged an appeal with FIFA, the decision of which
has yet to be determined.[9]
Conclusion
It won't be long before the flags are
unfurled once again as we await season 2017/18. With four Scottish teams
set for the opportunity to compete in European competitions, the season is
tipped to be just as exciting as 2016/18, as they aim to make their mark on
Europe. Clubs, generally, in the SPFL continue to improve the standard
and build on their strengths season by season and with an emphasis on
grass-roots football, the focus on development leagues will be one-to-watch
this coming season, particularly with Rangers FC dropping out of the domestic
development league to play in European fixtures (a move supported by all
concerned). What will continue to underpin the sporting contests and
ensure that the platform continues to exist for the sport to flourish will be
good governance and appropriate, proportionate, responses to concerns regarding
breaches of rules be they alleged or proved.
IMPORTANT: This post is not intended to be a legal briefing, it is not intended to be a statement of the law and no action should be taken in reliance on it without specific legal advice.
References
[1]http://www.scottishfa.co.uk/resources/documents/SFAPublications/ScottishFAPublications2016-17/Judicial%20Panel%20Protocol%202016-17.pdf
[4] http://www.heraldscotland.com/sport/14912307.SFA_hand_Joey_Barton_one_match_suspension_for_breaching_football_betting_rules/
[8] Decision
of the Judicial Panel, in complaint against Hibernian FC, (28 September 2016),
Reference number: 2015 16 339
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