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Trade Mark Abuse
Who is the Abuser, who is the Victim

Trade Marks are proper intellectual property assets. What is also clear (to me) is that they are also much abused, not only by counterfeiters, but also by their owners. A recent case suggests a fascinating twist may yet come about in Trade Mark law.

A Trade Mark is a mark attached to goods. It is registered to the owner, and is used to identifythe goods as originating from the trade mark owner. Thus if I use the word 'adidas' to suggest that a shirt I sell was made by Adidas, and it isn't then I infringe that trade mark. Since I am cheating the public, I should be prosecuted. If however, I use the trade mark in the course of a discussion, as I do here, I am not using it to identify the source of any goods, and so I commit no offence. I am not using the mark as a mark, in any full trade mark sense.

There is much humbug about all this. In my years defending in the magistrates courts, we occasionally represented some poor market trader, who was selling goods with an offending trade mark. We had to listen to great wads of self righteous clap-trap from Trading Standards officers, about people being cheated. It was nonsense, and they knew it, and the magistrates knew it. It didn't, however stop the prosecution, or conviction.

When very young, my daughter already knew that she had a choice of buying a cobber Nike (or whatever) sweatshirt (or whatever) and paying well over the top for its value, or she could get a much cheaper counterfiet down at the market. She knew full well that what she was buying was not manufactured by the owner of the mark. She was not being cheated - rather she knew already that she should not be cheated by the mark owner into paying ridiculous additional sums, for the glory of adding to the company's own advertising.

Trade Marks are not being used to indicate the origin of the goods, but to manipulate, and take advantage of, the emotional susceptibilities of the young, the need to behave in a tribal manner, to be one of the crowd. Trade Marks are being abused by owners claiming what is in effect a monoploy right to make any use of the Mark. If absolutely any use of the words in a Trade Mark is an an abuse, then heaven help us all.

So much is however, a lost cause.

More interesting is a challenge to Footall Clubs. Remember that Trade Marks are used as Trade Marks when they are used to indicate the origin of the goods. If I wander down the road to a football match waving a scarf in my team's colours, and showing their emblem, I am precisely not saying how proud I am to have bought my goods at an inflated price from club's shop. I am proclaiming my allegiance to the team. Someone who manufactures the goods for me, and who makes no pretence that they are the creation of the football club, should not be deemed to be using the Trade Marks as Trade Marks.

The case of Arsenal Football Clubplc v Reed Times 26 April 2001, was on this precise point. Reading the case is instructive. The 'other' non-club manufacturer lost - and for the moment at least anyone else should expect to lose if they try to fight on this point. What was fascinating was the clear reluctance of the judge to find for the football club. One can feel his sympathy for the fans. Whilst he made it clear that he was bound by precedent, he invited the parties to take the case forward, either to the Court of Appeal, or to the European Court of Justice. We can only pray that they do.

One last comment, is to applaud the lawyers who represented the manufacturer. The point they took was like a breath of fresh air.

Important: Please note that our law-bytes are retained for archival purposes only. The law changes, and these notes are often, now, out of date. You must take direct advice on your own personal situation and the law as it currently stands.
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Copyright and Database Rights: David Swarbrick 2012
18 October 2013 http://www.swarb.co.uk/lawb/iptmAbuse.shtml 467 18 October 2013