Judge rejects ‘Tartan Army’ trade mark infringement claim

Tartan Army Limited claimed that Alba Football Fans Limited was infringing its rights in terms of section 10 of the Trade Marks Act 1994 and EU Trade Mark Regulations by publishing “The Famous Tartan Army Magazine” and using the term for the Scotland national football team’s supporters in products and services sold by it, including travel services for fans.

However, a judge in the Court of Session ruled that the defender’s magazine title could not be said to be “identical” with the pursuer’s trade mark, and that supporters would not “associate” it with the merchandise sold by the pursuer.

Lord Glennie heard that the “Tartan Army” had been used as the collective noun for Scottish football fans since the 1970s.

Ian Adie registered the name “Tartan Army” as a UK and EU trade mark in 1996, giving him sole rights to use the term on a wide variety of merchandise, including clothing, banners and publications.

He sold his business, Tartan Army Limited, to Robert Shields and Donald Lawson in 2006 and they took over ownership of the trade marks.

Tartan Army Limited raised an action against Iain Emerson’s company, Alba Football Fans Limited, which publishes The Famous Tartan Army magazine and organises travel services for fans under the same name.

The pursuer had sought count and reckoning by Alba for the 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.

However, the pursuer dropped that claim at the commencement of the proof.

Therefore, when the action came to court the pursuer was seeking interdict prohibiting Alba from infringing its rights and from “passing off” its goods as goods sold by the pursuer, as well as an order for “destruction of all products and promotional and marketing material in Alba’s possession” which used the “Tartan Army” mark.

But the judge held that the use of the word “famous” was important, as it meant the signs were not identical.

In a written opinion, Lord Glennie said: “Long before the application for the Trade Marks, the tartan army was famous, in the sense that it had a nationwide, perhaps worldwide, reputation. To that extent the addition of the word “Famous” before Tartan Army is not unimportant. It is not an insignificant detail which the average purchaser or customer would not notice. In my judgment the defender’s Magazine title cannot be said to be identical with the pursuer’s Trade Mark.

“The attempt to bring the case within section 10(1) of the 1994 Act therefore fails. The attempt to bring the case within section 10(2)(a) of the 1994 Act (identical mark, similar goods or services) also fails for the same reason even if, contrary to my finding above, the defender’s services are not identical but merely similar.”

He added: “So far as concerns the argument that infringement is established in terms of section 10(2)(b) of the 1994 Act (similar mark, identical or similar goods or services) I would accept that the marks are similar and that the goods or services are identical or similar for the reasons set out above. But infringement under this paragraph requires there to be a likelihood of confusion on the part of the public from the use of the defender’s sign alongside that of the pursuer, which may include the likelihood of association of the defender’s sign with the pursuer’s trade mark.

“I do not find this established. The evidence does not suggest that anyone becoming aware of the magazine would associate it with the pursuer or any of the pursuer’s products bearing the words Tartan Army. Nor does it seem to me to be likely that there would be any such confusion.”

The complaint about the travel services offered by the defender also failed, as the pursuer’s relevant trade mark in that particular class of services had been cancelled.

And for the same reasons that infringement was not established in relation the magazine and other goods, the claim for “passing off” also failed.

However, the judge did uphold a counterclaim by the defender, who argued that the trade mark in respect of certain goods was invalid or should be restricted as the pursuer had not made “genuine use” of the relevant marks.