Not such a beautiful game: Tartan Army Limited v Alba Football Fans
| Date | 01 September 2017 |
| DOI | 10.3366/elr.2017.0440 |
| Published date | 01 September 2017 |
| Pages | 429-435 |
In
First used in the 1970s, the “Tartan Army” is the name informally given to the body of Scotland football fans.
In the late 1990s, Ian Aidie – a committed Scotland football fan, but not purporting to act as a representative of the “Tartan Army” – had the idea of developing the “Tartan Army” name into a brand. Through a company which he controlled, Mr Aidie registered various trade marks in the UK and elsewhere for the marks “THE TARTAN ARMY” and “TARTAN ARMY” in relation to goods such as clothing, headgear, scarves and flags.
In 2005, two individuals, John Tannock and Iain Emerson, approached Mr Aidie about a magazine, entitled “The Famous Tartan Army Magazine”, which they wished to launch. Mr Aidie made no objection to this.
In 2006, the “TARTAN ARMY” trade marks were assigned to the pursuer, a company controlled by Mr Adie and his brother. The pursuer also filed a European Union (“EU”) trade mark for “THE TARTAN ARMY”, covering goods such as those noted above and various services including retail, travel, publishing and catering services. Mr Aidie and his brother thereafter sold their interest in the pursuer.
The present dispute arose in around 2007. It was discovered that the producers of “The Famous Tartan Army Magazine” had organised a supporters' trip to Paris. The pursuer's new owners objected. In 2008, a further supporters' trip to Amsterdam was organised. In response, the pursuer withdrew any previously-granted permissions to use the “TARTAN ARMY” mark.
Undertakings were sought from Mr Emerson and others but were not forthcoming and proceedings were commenced in 2009. The litigation was initially slow. By the time of proof,
As a result of a successful non-use revocation attack by Alba (not discussed further here) and the dropping of various goods and services from the pursuer's EU trade mark in the time period before proof, the pursuer was left with only quite narrow registered trade mark rights, covering clothing and headgear in class 25 (the UK and EU trade marks), beers in class 32 (the EU trade mark) and online publishing in class 41 (the EU trade mark).
In order to be validly registered, a mark must not fall within any of the so-called “absolute grounds” for refusal or invalidation of a trade mark to be found in section 3 of the Trade Marks Act 1994 (“TMA”) and Article 7 of the Community Trade Mark Regulation (“CTMR”). The TMA and CMTR are, for present purposes, identical. By section 3(1)(a) of the TMA, a “sign” (the trade mark law terminology for a putative trade mark) must fall within the definition of what may constitute a registered trade mark set out in section 1(1) of the TMA, being signs capable of being represented graphically which are also “capable of...
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