injunction to prevent wrongful use. In this connection,
use of a mark in a different business is no defence. Thus,
in Discovery Communications Inc vDiscovery FM Ltd
(2000) the court granted an injunction to prevent the
use of the claimants’ registered mark ‘Discovery Channel’
by the defendants who were trading under ‘Discovery
102’. The fact that the claimants were engaged in cable
and satellite television, whereas the defendants were in
radio, was no defence.
A more recent and high-profile case of infringement
of a trade mark appears below.
control of counterfeit goods. This produces the rather
bizarre result of prosecutions being brought by trading
standards to protect the consumer, but incidentally to
protect the interests of enormously wealthy organisations,
e.g. Microsoft, at the UK taxpayers’ expense. The cost of
these prosecutions awarded out of public funds may in
some cases exceed £100,000!The Community Trade Mark
The Community Trade Mark (CTM) is a single trade mark
right which extends throughout the EU. The system is
available to any country which is a member of the EU or
person who is domiciled in a country in the EU or has a
commercial establishment in the EU.
A CTM may consist of any distinctive sign capable of
being represented graphically.
Applications are filed at any National Trade Marks
Registry such as the UK Registry in London or directly
at the CTM office in Alicante, Spain. The CTM office is
known as the Office for Harmonisation in the Internal
Market.
Enforcement
A CTM is enforced by what is called ‘an infringement
action’ in a national court. It is possible to ask for a pan-
European injunction covering the whole community and
damages.
Advantages and disadvantages of the
CTM system
A main advantage is that a single application allows
a trade mark to be registered throughout the EU at less
cost and administrative effort than individual applica-
tions to each country, making enforcement easier.
However, since CTM gives rights to so many coun-
tries it is likely that large numbers of conflicts will arise
so that it will be difficult to select a CTM which will not
be opposed at registration stage. The registry is required
to publish applications and oppositions must be lodged
with the Registrar within three months.Trade marks and comparative advertising
The law on comparative advertising (which is advertis-
ing by reference to a competitor’s name or product) has
been relaxed by the provisions of the Trade Marks Act- It appears from the following case that the court
felt that in considering the new provisions for the first
time the main object of those provisions was to allow
comparative advertising and that they should not be
read in such a way as to effectively prohibit it.
Part 4Business resources
440
Arsenal Football Club plcv Reed(2003)The case arose because Arsenal had registered the words
‘Arsenal’ and ‘Arsenal Gunners’ as trade marks along with
its cannon and shield emblems. The marks were used on
a wide variety of goods. Registration took place in 1989.
Mr Reed had since 1970 sold unofficial Arsenal souvenirs
outside the club’s ground Highbury. The club contended
that this was an infringement of their trade mark.
The High Court ruled against the club because it was
known that the goods sold by Mr Reed were not official
club merchandise. Mr Reed had a notice of disclaimer
by his stall indicating that his products were not official
club merchandise. However, the High Court asked the
European Court to consider the application of the law.
Under Article 226 of the Treaty of Rome the ECJ can
only pass judgment on the law and not on the facts of
the case. The ECJ ruled that the function of a trade mark
is to avoid confusion as to the origin of goods but went
on to rule on the facts that Mr Reed had infringed the
Arsenal trade mark.
The case came back to the High Court where the
judge refused to apply the ECJ ruling because it was of
mixed law and fact. The matter then went to the Court of
Appeal. The High Court felt that the fact of the disclaimer
avoided confusion. The ECJ did not think the disclaimer
necessarily removed all confusion – a different view of
the facts. The Court of Appeal accepted the ECJ’s view
of the facts and ruled that Mr Reed was infringing the
Arsenal trade mark in spite of his disclaimer.
Comment. The case provides a singular illustration of a
UK judge refusing to apply an ECJ ruling.Section 92 of the Trade Marks Act 1994 contains
the criminal offence of unauthorised use of trade mark
materials and goods. The maximum penalty is an un-
limited fine and/or imprisonment for up to 10 years.
The section is used by trading standards in regard to the