Tartan Army Limited Against (first) Sett Gmbh; (second) Oliver Reifler; (third) Iain Emerson; (fourth) Alba Football Fans Limited
| Jurisdiction | Scotland |
| Judge | Lord Glennie |
| Neutral Citation | [2017] CSOH 22 |
| Court | Court of Session |
| Published date | 10 February 2017 |
| Date | 10 February 2017 |
| Docket Number | A49/09 |
OUTER HOUSE, COURT OF SESSION
[2017] CSOH 22
A49/09
OPINION OF LORD GLENNIE
in the cause
TARTAN ARMY LIMITED
Pursuer
against
(FIRST) SETT GmbH
(SECOND) OLIVER REIFLER
(THIRD) IAIN EMERSON
(FOURTH) ALBA FOOTBALL FANS LIMITED
Defenders
Pursuer: Mackenzie (sol adv); Shepherd and Wedderburn LLP
Defenders: Young; Drummond Miller LLP
10 February 2017
Introduction
[1] The pursuer is the owner of a number of UK and EU registered Trade Marks in the name “TARTAN ARMY”. It claims that the fourth defender, Alba Football Fans Limited (“Alba”), is infringing its rights thereunder by using the “TARTAN ARMY” mark in products and services manufactured, sold and/or provided by it and, in particular, by publishing The Famous Tartan Army Magazine (“the Magazine”) and organising travel services under that name. It also puts forward a claim in passing off. In its Summons it seeks: (1) interdict prohibiting Alba from infringing its rights in this way and from passing off its goods as goods sold by the pursuer; (2) an order for destruction of all products and promotional and marketing material in Alba’s possession which uses the “TARTAN ARMY” mark; (3) count and reckoning by Alba for the whole profits made by them from the publication and sale of magazines and supply of travel services and other goods and services infringing the pursuer’s registered Trade Marks and payment of the sum found due, which failing the sum of £300,000 with interest thereon; and (4) expenses. However at the commencement of the Proof Mr Mackenzie, who appeared for the pursuer, made it clear in a Joint Minute of Agreement lodged in process that the pursuer no longer insisted on conclusion (3) (count, reckoning and payment). Accordingly, so far as the pursuer is concerned, its claims in this action are now limited to conclusions (1), (2) and (4), ie interdict, destruction of infringing materials and expenses.
[2] By counterclaim Alba seeks declarator that the registrations of the various UK and EU registered Trade Marks owned by the pursuer are invalid in terms of sections 3 and 47(1) of the Trade Marks Act 1994 (“the 1994 Act”) and Articles 52 and 100 of Council Regulation (EC) No 207/2009 respectively (“the Regulation”). As regards the EU Trade Mark, Alba concludes in the alternative for declarator that that Trade Mark is invalid in respect of certain goods and services in terms of Articles 50(2), 52 and 100 of the Regulation: and, in the further alternative, for an order in terms of Article 51 of the Regulation revoking the registration of that EU Trade Mark in respect of certain goods and services.
[3] The issues between the parties are wide‑ranging and hotly contested. However, the fact that the pursuer does not insist on its claim for count, reckoning and payment means that the amounts at stake in financial terms are small. This has been reflected in the procedure adopted for the resolution of this dispute.
Procedural History
[4] This action was raised in February 2009 against three defenders, viz (1) SETT GmbH (“SETT”), a German company, (2) Oliver Reifler, a German national said to be behind SETT, and (3) Iain Emerson, the individual in Scotland who appeared to be behind the Magazine. The pursuer moved for interim interdict but this was refused. The action was not raised or marked as an Intellectual Property Action in terms of Chapter 55 of the Rules of Court. That meant that it did not come before an Intellectual Property judge and was not subject to any case management, even to the limited extent provided for by the Rules as they then were. The action was sisted in February 2010. The sist was recalled in March 2014 and parties were allowed to adjust their pleadings. In December 2014, after an extensive period of adjustment, the action against SETT and Mr Reifler was settled and decree of absolvitor was granted in their favour. They have now dropped out of the picture. In February 2015 Mr Emerson lodged a counterclaim seeking declarator of invalidity and/or rescission of the various registered Trade Marks. The pursuer amended its pleadings to join Alba as fourth defenders, on the basis that it was Alba that was publishing the magazine and offering the travel services and other promotions, albeit at the instigation of Mr Emerson, its sole shareholder and director. At the same time the action was translated into an Intellectual Property Action to which Chapter 55 applied. A Procedural Hearing under Rule 55.2E took place in April 2015. It was continued to June 2015 at which point, on the motion of the pursuer, it was ordered that there should be a debate as to the liability, if any, of Mr Emerson, for the acts of Alba. Following that debate, the action against Mr Emerson was dismissed in October 2015: [2015] CSOH 141.
[5] At a By Order hearing in January 2016 a Proof Before Answer of the remaining issues in the action was fixed for 28 June 2016 and the following three days. Mr Young, who appeared for Alba, submitted that an eight day diet of Proof should be allowed, which was a reasonable estimate if all the evidence was to be led in the traditional way. However, Mr Mackenzie argued that the sums at stake did not justify that, and it would be a long time before a Proof of that length could be heard. In an Intellectual Property Action the court has wide powers under Rule 55.2C(1) (just as it does in a Commercial Action under Rule 47.5) to make such order as is appropriate to ensure that cases are dealt with effectively and in a proportionate manner. Given the small amount at issue between the parties, I agreed with Mr Mackenzie that it would be disproportionate to allow a Proof of eight days with all the foreseeable consequences in terms of expense and delay. The Proof was fixed for four days. Mr Young opposed this order, but he did not challenge the court’s power under the Rule to make it. A Procedural Hearing was fixed for May 2016, some six weeks before the date fixed for the Proof, so that parties could update the court on what steps were being taken to ensure that the Proof was concluded within that time and to resolve any outstanding issues. There was in fact some slippage in the timetable for reasons which need not be gone into. Parties co‑operated effectively to ensure that the Proof did conclude within the four days allowed. In particular they entered into a Joint Minute in terms of which they agreed how evidence was to be dealt with. Subject to objections as to competency and relevancy, all productions lodged in process were to be admitted into evidence quantum valeat irrespective of whether or not they had been spoken to by a witness. Subject to any objections as to competency and relevancy, all written witness statements lodged in process by the parties were admitted in evidence as the evidence in chief of that witness, whether or not that witness was called to give oral evidence. A party was not held to have accepted a witness’s evidence just because he did not cross examine him (whether on a particular issue or at all); the evidence of that witness would be admitted into evidence quantum valeat. Submissions by either party as to the reliability of a particular witness could be made by reference to the terms of the witness’s written witness statement and any other documents or witness evidence, whether or not it had been put to the witness; but issues of credibility, if they were to be raised in final submissions, must have been put to the witness at the Proof. I commend parties for dealing with the matter in this way. As a result, although there were a large number of relatively short witness statements, the oral evidence was confined to four witnesses. Their evidence concluded within a day and a half, leaving over two days for oral argument supplementing detailed written submissions.
The Trade Marks
[6] The Trade Marks in dispute in this action are UK and EU Trade Marks. It should be noted that the pursuer is also the owner of Trade Marks registered in the United States, Canada, Australia and New Zealand protecting the text THE TARTAN ARMY and TARTAN ARMY, but no issue arises in respect of these Trade Marks in this action.
[7] The UK Trade Marks were taken out by Scottish Music Merchandising Limited (“SMML”), a company owned and controlled by Mr Ian Adie (possibly with the involvement of his brother Alan Adie). In January 2006 SMML assigned the Trade Marks to the pursuer, another company owned and controlled by Ian Adie and his brother. In May 2006 Ian and Alan Adie sold the entire share capital in the pursuer to Robert Shields and Donald Lawson. They are the individuals behind the pursuer in the present action. The EU Trade Mark was filed before the sale to Messrs Shields and Lawson but only registered some time afterwards, in May 2009.
[8] The details of the Trade Marks in dispute in this action are as follows. All record the pursuer as proprietor. References are to classes in the Nice Classification.
(i) UK Registered Marks
Trade Mark 2119111
Filing date: 19 December 1996
Renewal date: 19 December 2016
Trade Mark text: THE TARTAN ARMY
Class 25: Articles of clothing; headgear; footwear; hats, scarves, pullovers, sweatshirts, shirts and t‑shirts.
Trade Mark 2137538
Filing date: 1 July 1997
Renewal date: 1 July 2017
Trade Mark text: THE TARTAN ARMY
Class 24: Flags, bunting, banners; bed blankets; bedspreads; cushion covers; curtains; fabric; towels; furniture coverings; handkerchiefs; pillowcases; quilts; travelling rugs; serviettes; table linen; table mats; wall hangings.
Trade Mark 2181028
Filing date: 31 October 1998
Renewal date: 31 October 2018
Trade Mark text: THE TARTAN ARMY
TARTAN ARMY
Class 27: Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile).
(ii) EU Registered Marks
EU Trade Mark 5020672
Filing date: 30 March 2006
Renewal date: 30 March 2016
Registration date: 7 May 2009
Trade Mark text: THE TARTAN ARMY
Class...
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