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'One-nil to Arsenal'
Feature: 3/8/2002



They look just like the real thing, but at half the price. But just how legal are so-called 'unofficial products'? Traders have long been exploiting a grey area in the law by using other people's trademarks, but at the same time openly stating that they are 'unofficial merchandise'.

Now recent rulings in the high court in Brussels look to have huge implications on the entire 'unofficial products' market. The rulings have been brought through a case involving Arsenal Football club and an unofficial merchandiser, Matthew Reed, who has been selling branded products outside Highbury since 1970.

A 'match report' by solicitor Mark Lomas, intellectual property expert at Bevan Ashford, says that cheap football strips have been around for years, and not just simple counterfeits. There has been a distinct rise in the number of retailers offering look-alike clothing - bearing a team's label but clearly marked 'unofficial merchandise'.

Mark Lomas
Mark Lomas


Lucrative market

Whilst all eyes were turned to the East and silky South American skills prevailed on the pitch, a senior judge at the European Court of Justice handed down a preliminary opinion relating to Arsenal Football Club's trademarks that could have profound effects on the lucrative market in openly 'unofficial products' (director-e News, Thursday 01 August 2002).

When most people think of football in terms of the textiles industry it is always along the same lines of how much the strips costs and the regularity with which new strips are brought out. No one can deny either of these facts, the strips are expensive and they are changed with fair regularity.

In all fairness however, the fans continue to buy them and they remain a good source of income for the clubs. They also remain a good source of income for many others wanting to cash in on a club's brand.

These are the traders who stand outside the stands, or hawk their wares in the high streets, ignored by the police who, more often than not, give as much consideration to intellectual property and trademark laws as do the shoppers who buy their goods.

The idea behind this trade is not to mislead customers about the origin of the product itself. The practice is not the same as straight counterfeiting when rogue traders pretend the product is the real thing, for example, the infamous fake Rolex, Louis Vuiton luggage or Ralph Lauren Polo shirts.

The unofficial market is vast, and many producers feel their brand goodwill is being diluted by the sale of inferior products.

'Unofficial' scarves

Arsenal LogoThe Arsenal Football Club case has been running for a while and concerns a claim against Mr Matthew Reed concerning the sale of unofficial 'Arsenal' football scarves outside the Highbury football ground, a trade that Mr Reed has apparently conducted since about 1970.

This is the latest in a line of cases over recent years dealing with what is, or is not, acceptable use of a trademark, including a case in Scotland over the use of the words Wet Wet Wet in a book to refer to the popular beat combo of that name and the much publicised sale of Elvis Presley memorabilia under the mark "Elvisly Yours".

The Arsenal case is not over yet, but the opinion from Europe has put pressure on the Reed goalmouth. The on-looking crowd of trademark lawyers, rights owners and traders in unofficial merchandise suspect that things are not looking too good for Mr Reed.

Mr Justice Laddie, the senior High Court patents judge, will shortly reassess his decision in the Arsenal case in the UK. Will he reach for the red card? Will it be a yellow or simply "play on"? Soon, one set of supporters will be celebrating and the others will carry faces reminiscent of a German goalkeeper on an early July afternoon.

Whatever Mr Justice Laddie decides, if the European Court of Justice upholds the preliminary opinion of the Advocate General, Ruiz-Jarabo Colomer, it will cause trademark ripples throughout Europe and well beyond football and well beyond the textiles trade.

This is because domestic Courts throughout Europe are bound by European decisions and this case is relevant to the growing market in merchandising.

Trademark questions

The background to the ECJ's recent opinion is that Mr Justice Laddie asked for guidance in connection with the Arsenal case on a series of technical questions about what constitutes use as a trademark, including whether or not there was a defence if the use complained of was as a "badge of support, loyalty or affiliation".

The Advocate General openly acknowledged in his written opinion that he did not directly answer the questions in the way the High Court framed them. To cut a colourful judgement short (which managed to mention characters as diverse as Andy Warhol and Zinedine Zidane), the Advocate General said that the true test was to ask why was the trader using the mark, as opposed to why did the customer buy the product.

If the trader's reason for using the mark were commercial then in 99 percent of cases (if there was no other defence) the claim would succeed.

The trade in unofficial products is of course commercial in nature. It is therefore the voices of the rights owners who are currently chanting loudest, but as everyone knows in football pundit parlance, "it's not over until the final whistle".

So don't be too surprised if there is a golden goal in this particular match waiting to be scored.

© Bevan Ashford. Mark Lomas is the partner in charge of Bevan Ashford's intellectual property unit. www.bevan-ashford.com Email m.lomas@bevan-ashford.com
Author: Bevan Ashford
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