Course Title:Intellectual Property Law: Theory, Patent & A ; Trademark
Arsenal Case – The Disappointment
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In this commentary, the author will critically analyze the effects, deductions and his remarks on the judgement offered inArsenal Football Club Plc V Matthew Reed[ 1 ] ( “Arsenal” ). The commentary will be divided into 3 subdivisions below, viz. : effects and deductions of the judgement ; remarks and ; decision.
Effectss and Deductions of Judgment
In this selling instance, likely cipher will be happier to see the judgement ruled in his/her favor than the trademark owners themselves. This is an of import instance which impacted on all merchants, rendering it a batch easier for them to claim for violation, and would supply an feeling that the tribunal looks to offer a wide reading to the range of the protection of registered hallmark under the Directive commissariats. The Directive in inquiry nevertheless, does non go forth much room for steering when it falls into peculiar classs of violation, where the Directive offers absolute protection when the individuality between grade and mark and goods or services is the instance ; and likeliness of confusion as a specific fringe benefit in the instance of similarity between Markss and/or goods or services to trip the protection clause. [ 2 ]
With such unconditioned protection offered, the tribunal ought to hold given a thorough reading of Article 5 ( 1 ) ( a ) of the Directive, specifically to the constructs of ‘identity’ [ 3 ] ; ‘use in the class of trade’ [ 4 ] ; ‘in relation to goods or services’ ; ‘consent’ [ 5 ] . Surprisingly the tribunal did non to the full clear up the abovementioned constructs, and contrary to instances prior and after, where the relevant commissariats were given clear elucidations.
In relation to the definition of ‘use’ , the tribunal merely stated that such hallmark protection must be granted in all instances in which such usage affects or is apt to impact the maps of the hallmark. [ 6 ] The tribunal so came to a decision that one time the map of warrant is affected, the manner the mark is perceived is no longer relevant. [ 7 ]
The author believes that such retention is aimed to refute the statement of ‘no confusion on consumers portion as to origin of products’ , nevertheless such keeping merely provides account as to ‘effects of use’ and non the definition of ‘use’ itself. One indispensable inquiry from this is whether a differentiation is present with hallmark and non-trademark usage.
The tribunal did non supply direct and precise reading to ‘use’ , where it merely implicitly stated that hallmark owners deserve protection against whoever takes unjust advantage of such grade by selling merchandises illicitly bearing it. [ 8 ] Advocate General Ruiz Jarabo Colomer nevertheless has gone on to specify usage as ‘…is usage for the intents of commercial development.’ [ 9 ] And together with the usage of indistinguishable mark, would represent ‘trademark use’
The author suggests the tribunal, back in clip, to steer the national tribunals by clearly specifying ‘use’ and the first inquiry posted in forepart of the ECJ. [ 10 ] With the instances available back so, it appearsHotlerhoff[ 11 ] would be of extreme aid. The author believes that in instance of hallmark violation where individuality is confirmed, 4 conditions ought to be fulfilled [ 12 ] , of which the first 3 are based onHotlerhoff. 1 ) ‘Use’ of mark must be of gross revenues intents, excepting unwritten dialogues. [ 13 ] 2 ) ‘In relation to goods’ should intend fond regard of marks on goods. [ 14 ] 3 ) Mention of mark is non merely for descriptive intents [ 15 ] and it is interpreted by possible clients as bespeaking beginning of merchandises. [ 16 ] 4 ) ‘Consent’ must be missing from the owner of registered hallmark, which means the usage must be illegal.
By such analogy, the first inquiry should be in the affirmatory by mentioningHotlerhoff. The tribunal nevertheless did non take on such undertakings, but instead provided a wide reading to such protection that defense mechanism to infringement where the indistinguishable mark affects or is apt to impact the hallmark owner, disregarding the fact that such protection is non absolute if it indicant of beginning is non present.
Traveling back to the present yearss, the impact of the instance might good be diminished afterDavidoff & A ; Cie SA v Gofkid Ltd[ 17 ] where the tribunal held that stronger protection under commissariats of dilution in Article 5 ( 2 ) [ 18 ] of the Directive [ 19 ] should be offered, where it expanded to protecting a mark which is indistinguishable with or similar to his grade for goods and services which are non similar to those in regard of which the grade is registered. The tribunal besides made it clear that protection will be offered in instances where ‘the usage of the mark without due cause takes unjust advantage of, or is damaging to, the typical character or the reputation of the grade.’ [ 20 ] This gives the owners extra ‘arsenal’ to protect their rights if they are proprietors of reputed Markss.
The author sees this instance as the perfect juncture for the tribunal to offer a more precise counsel on the capable affair ; nevertheless the tribunal has merely managed to reassure their will to protect hallmark rights, but nil farther. The author felt that such elucidations could hold been offered much earlier on, instead than go forthing the general public puzzling, until the ulterior instances came about and helped to clear up its point of view.
- Arsenal Football Club Plc V Matthew Reed[ 2003 ] EWCA Civ 696
- Directing 89/104/EEC of the European Parliament and of the Council
- SA Societe LTJ Diffusion v. Sadas Vertbaudet SA[ 2003 ] FSR 34
- Trade Marks Ordinance( Cap. 559 )
- 02 Retentions v. Hutchison 3G[ 2006 ] RPC 29
- British Sugar Plc v. James Robertson & A ; Sons Ltd[ 1996 ] RPC 281
- Zino Davidoff v A & A ; G Imports, Levi Strauss V Costco and Tesco Stores Limited[ 2002 ] RPC 20 Joined instances
- Arsenal Football Club Plc V Matthew Reed[ 2003 ] EWCA Civ 696, Advocate General Opinion
- Michael Holterhoff V Ulrich FreieslebenCase C-2/00
- Francesca Romana Barresi,The ‘Arsenal’ of the ECJ for the Protection of Trademarks RightsKluwer Law International, Vol. 30, Issue 2 ( 2003 )
- Michael Holterhoff V Ulrich FreieslebenCase C-2/00, Advocate General Opinion
- Davidoff & A ; Cie SA v Gofkid Ltd[ 2003 ] 1 WLR 1714
- Directing 2008/95/EC of the European Parliament and of the Council