The Tartan Army Limited Against Sett Gmbh And Others
| Jurisdiction | Scotland |
| Judge | Lord Glennie |
| Neutral Citation | [2015] CSOH 141 |
| Date | 22 October 2015 |
| Published date | 22 October 2015 |
| Court | Court of Session |
| Docket Number | A49/09 |
| Year | 2015 |
OUTER HOUSE, COURT OF SESSION
[2015] CSOH 141
A49/09
OPINION OF LORD GLENNIE
In the cause
THE TARTAN ARMY LIMITED
Pursuer;
against
(FIRST) SETT GMBH, (SECOND) OLIVER REIFLER, (THIRD) IAIN EMERSON and (FOURTH) ALBA FOOTBALL FANS LIMITED
Defenders:
Pursuer: Mackenzie, solicitor advocate; Shepherd and Wedderburn LLP
Third Defender: Young; Drummond Miller LLP
22 October 2015
Introduction
[1] In this Intellectual Property action the pursuer advances claims against a number of defenders in respect of alleged infringements of various “Tartan Army” trademarks.
[2] The “Tartan Army” name was first used in the late 1970s, when the Scotland football team qualified for the 1978 World Cup in Argentina. A novelty song was released entitled “Ally’s Tartan Army”, “Ally” referring to the team manager, Ally MacLeod, and “Tartan Army” referring to the fans who travelled to support the Scotland team. Since then, the Tartan Army, i.e. the Scotland football supporters travelling under that name, have won various awards for their friendly nature, sporting spirit and charity work. They have been awarded a FIFA fair play award by the Belgian Olympic Committee and were named as the best supporters during the 1992 European Championship and at the 1998 World Cup in France, where they were presented with a trophy for non-violence in sport and for their sense of fair play.
[3] The pursuer avers that the “Tartan Army” mark has developed and is now well established as a symbolic renowned brand associated with sporting spirit, friendly travelling support and fair play. It is the owner of a number of trademarks for the “Tartan Army” mark which have been filed and registered in the United Kingdom and a number of other countries, it having purchased some or all of those trademarks from one Ian Aide in about 2006. The UK trademarks provide protection in classes which include textile goods, clothing, footwear, headgear and football strips, and the registered trademarks in other countries, including New Zealand, Australia and the USA, providing similar protection. In addition, it has a Community trade mark which provides protection in, among other things, printed matter and magazines, travel agency services, travel and ticket reservation services and travel information services. The pursuer avers that it offers a range of high quality goods and services to the public, including various sponsorship deals and travel promotions, through its online Tartan Army shop. It has granted permission to associated companies to use the brand. Its website provides a place for all Scotland supporters worldwide to obtain exclusive Tartan Army merchandise, gifts and travel, to obtain the latest sports news, and to take part in discussions with other members of the Tartan Army. It publishes a monthly newsletter. It is also involved in charity work and has organised tour co-ordinated events with a view to raising money for charities such as Children in Need.
[4] The pursuer claims that from about 2007 or 2008 the defenders have infringed its rights in the “Tartan Army” trade mark by publishing a magazine known as “The Famous Tartan Army magazine” and offering other services using the “Tartan Army” mark. It avers that the defenders’ sign highlights the words “Tartan Army” in a manner which is identical to the way in which those words appear when it uses them, and that the defenders offer goods, travel services and promotions identical with its own offerings. It seeks interdict preventing the defenders infringing its exclusive right to use the “Tartan Army” mark and from passing off, by use of the that mark, its own goods and services as if they were manufactured or sold by the pursuer; an order for destruction of all products and promotional and marketing material in the defenders’ possession using the “Tartan Army ” mark; and count and reckoning by the defenders for the profits made by them from September 2007 to date from the publication and sale of magazines and the supply of goods and services infringing the trademarks, and payment of the balance found due, which failing the sum of £300,000, plus interest. It also seeks the expenses of the action.
[5] The pursuer has settled its dispute with the first and second defenders. I need say nothing more about them. However, the action continues as against the third and fourth defenders, namely Iain Emerson (“Mr Emerson”) and Alba Football Fans Limited (“Alba”).
[6] Alba was incorporated on 4 November 2008. Mr Emerson is its sole director.
They both admit that Alba publishes the Famous Tartan Army Magazine (“the Magazine”). However, they raise a number of defences. Among other things, they say that the Magazine was first published in 2005 by SFM Promotions Limited (“SFM”), a company incorporated by Mr Emerson and his then business partner. They say that Mr Aide, who then owned the UK trademarks, represented that he had no issue with SFM publishing the Magazine. They aver that the pursuer was fully aware of this when it purchased the UK trademarks from Mr Aide and even placed advertisements in and contributed to the Magazine thereafter. When SFM went into liquidation in late 2008 its intellectual property rights were assigned to Alba, which was incorporated by Mr Emerson for the specific purpose of acquiring and continuing SFM’s business. Since then both Mr Emerson and Alba have invested time and money in developing, producing, promoting and growing the Magazine. Alba publishes the Magazine; Mr Emerson does not. No trademark protecting rights in publication of a magazine existed when Alba commenced publication. Only the Community trademark protected such rights and it did not exist at that time. In any event, both Mr Emerson and Alba deny that the “Tartan army” mark is sufficiently distinctive to be capable of protection by a trademark. Mr Emerson counterclaims for declarator that the trademarks are invalid and also for declarator that the Community trademark, which was only registered in 2009, is invalid in whole or in part, having been acquired in bad faith.
Procedure
[7] The action began some considerable time ago but was sisted soon afterwards. The fourth defender, Alba, was only brought into the action in February 2015. Alba lodged defences in March 2015 in substantially the same terms as those already lodged by Mr Emerson. Those defences raise potentially complex issues of fact and law.
[8] It is the pursuer’s case that Mr Emerson is personally liable for the actings of Alba in relation to the matters complained of in the action. Mr Emerson, by contrast, says that every action of which the pursuer complains, to the extent that it was done at all, was done by Alba, not by him personally. On 1 April 2015, at a preliminary hearing in terms of Rule of Court 55.2E, the pursuer sought and obtained an order for further specification of the structure and management of Alba and, in effect, the relationship between Mr Emerson and Alba. The preliminary hearing was continued. Alba complied with the order by providing the information in a precognition by Mr Emerson.
[9] At the resumed preliminary hearing in June 2015 the pursuer submitted that the question whether Mr Emerson was properly convened as a party to the action on the basis that he was personally liable for the actions of Alba was likely to have an important bearing on the future conduct of the case and ought to be decided first. The defenders, for their part, argued that the case should be appointed to a proof before answer restricted to the issues of validity raised in Mr Emerson’s counterclaim. I preferred the suggestion made by the pursuer. It seemed to me that the issue of Mr Emerson’s personal liability might well be critical to the future progress of the action and I appointed the case to debate on this question.
The relevant averments
[10] The pursuer’s case on the pleadings on this point is as follows. In Art.1 of Condescendence it avers that:
“The third defender [Mr Emerson] is the sole director and shareholder of the fourth defender [Alba]. There has never been and there is unlikely to be any employees (sic) of the fourth defender. The day to day decisions are taken by the sole director, the third defender. The third defender is the controlling mind of the fourth defender. The third defender has directed or procured the commission of the wrongful act complained of. The third defender is convened as he is the personification of the company.”
In Art.6 it makes the following further averments:
“Alba Football Fans Limited was incorporated on 4 November 2008. The third defender is the sole director of Alba Football Fans Limited. Alba Football Fans Limited was set up by the third defender to provide a vehicle to continue to use the Tartan Army trademark. The third defender directed and directs or procured and procures the actions of Alba Football Fans Limited. Alba Football Fans Limited has not files accounts with Companies House and the Annual Return is overdue. … The third defender directs and procures the actions of the fourth defender. The fourth defender is called upon to explain the averment ‘It [the magazine] is not, and has never been, produced and published by the third defender personally.’”
In Art.9 the pursuer avers that the Magazine is published by Alba, who own the copyright. It also avers that “the defenders” (i.e. all four defenders) publish the Magazine and offer travel services and promotions. Finally, in Art.10, the pursuer says this:
“The third defender incorporated Alba Football Fans Limited in November 2009. This company was incorporated to continue the publication of the Famous Tartan Army magazine. The continued publication of this magazine is an infringement of the pursuer’s trade marks. The third defender avers … that he is the directing mind of Alba Football Fans Limited. The third and fourth defenders are acting in concert in the publication of the Famous Tartan Army magazine and the offering of travel...
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