Merchandising, The Live Concert Industry
Reed -v- Arsenal FC (2002)
The curious case against ‘unofficial’ merchandiser Mr Reed BY Arsenal Football Club (AFC) carries on. The initial hearing in the High Court, London, before Mr Justice Laddie resulted in an unexpected win for Mr Reed. The Court held that because Mr Reed made it quite clear that his goods were unofficial, AFC could not rely on the law of passing of or their registered trade marks for ‘Arsenal’ ‘Gunners’ (AFC’s nickname) and two logos to prevent Mr Reed selling his goods near the club’s ground.
The European Court of Justice overturned this decision holding that the unauthorised use of ‘badges of allegiance’ were protected by trade mark law. Mr Reed’s use of the signs created an impression of a link between the goods he sold and AFC and AFC as the proprietor [of a registered mark] is entitled to prevent unauthorised use of their marks.
See www.lawreports.co.uk ECJ: Case C-206/01
But in an unexpected twist the High Court ‘overturned’ the ECJ’s decision allowing Mr Reed to continue selling his ‘Gunner’s’ merchandise. The UK decision has sent tremors through the world of band merchandising with fears that a properly registered trademark will not protect bands or their merchandisers against third parties who sell branded goods where it is made clear that these goods are not ‘official’.
COMMENT : This case is very important in the music industry. Mr Justice Laddie’s acceptance that trade mark law and the law of passing off would not protect the owner of a mark against a third party who made it clear that his or her goods were not ‘official’ sent alarm bells ringing in the music industry. Trade marks are increasingly used to protect against unofficial merchandise and to prevent unauthorised third parties using band names, marks and images without the permission of the owner of the name, mark or image. The European Court took a different view and held that a registered trade mark gave protection beyond simple ‘passing off’ to give a near absolute right of registered trade mark owners to stop others using their marks even where the third party makes it clear that their merchandise is not connected with the actual trade mark owner. Clearly this is a more satisfactory position for merchandisers, bands and others who own marks in the music industry but as Mr Justice Laddie has decided not to follow the ECJ ruling the law is still unclear.