Arsenal Football Club v.

Matthew Reed

The claimant, Arsenal Football Club (AFC) was a football club in the United Kingdom, they were

associated with two graphics or logos, a 'crest' and a 'cannon' (the Arsenal signs) and were known as
‘Arsenal’ or ‘Gunners’. AFC registered the signs as trade marks. AFC also operated a commercial
business selling merchandise and souvenirs of the football team.

Idea of licence:

AFC granted a licence to a company, KTS, to sell its 'official' merchandise to vendors outside
the football club grounds. The defendant, Mr. Reed, was a self-employed proprietor of a wholesale
and retail football merchandise company, a limited amount of which were goods licensed by AFC.
AFC occasionally granted licences for the use of the Arsenal signs, in a way that each of the licensees
were required to mark its products to comply with AFC's current labelling, this was not done by Mr.
Reed and he was thus considered an unlicenced vendor. AFC brought proceedings against the
defendant for passing off and registered trade mark infringement.

AFC contended that unofficial merchandise sold by Mr. Reed, such as scarves with the words
'Arsenal' and 'Gunners' and logos identical or substantially similar to the crest and cannon devices
were deceptive and an infringement of its registered trade marks.

Passing Off:

AFC contended that Sales by Mr Reed of certain unlicensed souvenirs or memorabilia will mislead
members of the public into the belief that those goods are the products of AFC or are goods
associated or connected with or licensed by AFC because they bear one or more of the Arsenal signs

Passing off is concerned with what is happening and what is likely to happen in the marketplace. It is
designed to prevent damage being caused by deception to the goodwill of the claimant and the
business which benefits from that goodwill.

Trademark:

AFC alleges that Mr Reed had infringed the trademark of ‘ARSENAL’ and ‘GUNNERS’ by sale of
his Arsenal scarves. A person infringes a registered trade mark if he uses in the course of trade
where ‘a sign is used which is identical with the trade mark in relation to goods or services which are
registered and there exists a likelihood of confusion on the part of the public, which includes the
likelihood of association with the trade mark.’

HELD

For the purposes of passing off, it was necessary to show that there had been a misrepresentation
which had caused or was likely to cause a not insignificant part of the public to believe that certain
goods were the goods of another.

In all the circumstances, the Arsenal signs on R's products carried no message of origin and AFC had
failed to prove any relevant confusion or damage as a result of the defendant activities. The only loss
suffered was attributable to the fact that both parties were in competition in the sale of
memorabilia. Moreover, AFC had failed to prove that R deliberately deceived customers into
purchasing unofficial goods on the basis that they were genuine and official items.

An important factor in determining whether or not a particular sign had been used in a trade mark
sense was a customer's perception. The mere fact that words or designs were used on an item of
clothing did not mean they were used as a trade mark.
In the instant case, the Arsenal signs on R's products were perceived as a badge of support, loyalty
or affiliation to those to whom they were directed and would not be perceived as indicating trade
origin. It followed that the use of the four Arsenal signs on R's products did not amount to trade
mark use.

ON APPEAL

Case was decided in the claimant's favour.