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TARTAN ARMY LIMITED AGAINST (FIRST) SETT GmbH;  (SECOND) OLIVER REIFLER;  (THIRD) IAIN EMERSON;  (FOURTH) ALBA FOOTBALL FANS LIMITED


Submitted: 10 February 2017

Web Blue CoS

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 16*:                    Printed matter;  publications publicity and promotional material;  books, picture books, magazines, periodicals and supplements;  brochures and catalogues;  fact sheets, pamphlets and leaflets;  paper and paper articles;  cardboard and cardboard articles; table napkins and table mats;  wrapping paper;  greeting cards;  gift bags and gift boxes;  decorations for gifts;  colouring books;  paint boxes; stationery, including pens, pencils, crayons, pencil cases, erasers, rulers, posters, markers, pencil sharpeners, pictures and prints, stickers, paperweights, diaries and calendars.

Class 24:                      Textiles;  textile goods;  textile piece goods;  fabrics; and household textile articles;  bed clothing;  bedlinen;  duvets;  sheets;  pillowcases;  towels;  curtains;  cushion covers;  table cloths furnishing fabrics;  curtain materials, curtains;  towels;  stain, flame, soil and water resistant textiles and fabrics;  flags; soft furnishings, namely covers for furnishings, pelmets for curtains, curtain tie‑backs of textile, curtain valances, window blinds of textile and blankets.

Class 25:                      Clothing, footwear and headgear;  football strips. 

Class 27*:                    Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors;  wall hangings (non-textile).

Class 28*:                    Toys, games and playthings;  sporting and gymnastic articles;  interactive games;  hand-held electronic games;  balloons;  decorations for Christmas trees;  soft and plush toys;  cuddly toys;  playing cards.

Class 32:                      Beers;  mineral and aerated waters and other non‑alcoholic drinks;  fruit drinks and fruit juices;  syrups and other preparations for making beverages.

Class 33*:                    Alcoholic beverages (except beers);  wines, spirits and liqueurs;  alcopops.

Class 35:                      The bringing together, for the benefit of others, of a variety of goods namely souvenirs, clothing, household items, printed material, stationery, toys and drinks, enabling customers to conveniently view and purchase those goods from a retail store;  the bringing together, for the benefit of others, of a variety of goods namely souvenirs, clothing, household items, printed material, stationery and toys enabling customers to conveniently view and purchase those goods from a catalogue, by mail order, via a retail website or by means of telecommunications;  advertising, marketing and promotional services;  information and advisory services relating to all of the aforesaid services.

Class 39*:                    Travel agency services; travel and ticket reservation services;  travel information services;  transportation of travelers and travelers’ baggage;  guide services;  information and advisory services relating to all of the aforesaid services.

Class 41:                      Publishing services;  on-line publishing;  the provision of on‑line and electronic publications and digital music (not downloadable) from the Internet;  entertainment, education, sporting and cultural services;  information and advisory services relating to all of the aforesaid services.

Class 43*:                    Restaurant, snack bar, cafe and cafeteria services;  preparation of food stuffs or meals for consumption off the premises;  catering services for the provision of food and drink;  bar and public health services;  hotel services;  information and advisory services relating thereto.

 

Note (1)           Asterisks beside Classes 16, 27, 28, 33, 39 and 43 indicate that these Classes have been deleted or cancelled as set out below:

(a)        In face of opposition from a German food and drinks company, Class 33 was deleted by the pursuer in March 2009 (before the Trade Mark was registered);

(b)        Classes 16, 27, 28, 39 and 43 were cancelled with effect from 31 March 2016.

Note (2)           The remaining classes, viz. Classes 24, 25, 32, 35 and 41, were renewed with effect from 3 April 2016 for a period of 10 years.

Note (3)           On 13 May 2016 the pursuer made a new application for an EU Trade Mark in Classes 16, 39 and 43 in terms similar to (though more extensive than) the earlier lists of goods and services.  This application has been given a provisional filing date of 13 May 2016.

 

Evidence
[9]        Witness statements were lodged on behalf of the pursuer from the following individuals:

  • Robert Shields and
  • Donald Lawson, both directors of the pursuer;
  • Ian Adie, who (with his brother) first registered the Trade Marks on behalf of SMML, assigned them to the pursuer and then sold the share capital in the pursuer to Messrs Shields and Lawson;
  • John Tannock, who was involved for a time with Mr Emerson in SFM Promotions Ltd (“SFM”) in the publication of the Magazine and the organisation of supporters’ travel to away matches;
  • Kenneth Taylor, Sales Manager with Tennent Caledonian Breweries UK Limited and before that Sales Director (Northern region) for Scottish Brewers;
  • Gordon Muir, now Marketing Manager with Belhaven Brewery Company Limited and, before that, involved in the marketing of drinks for the last 18 years;
  • Graham Baird, Sales Director with Belhaven Brewery Company Limited, with over 30 years’ experience of the licence trade; and
  • George Kyle, Head of Sponsorship and PR with Tennent Caledonian Breweries UK Limited for the last 12 years, having been with that company for some 22 years in total.

Mr Shields, Mr Lawson and Mr Tannock gave oral evidence.  As agreed in the Joint Minute, the other statements were received as evidence without the makers of the statements being called as witnesses.

[10]      Witness statements were lodged on behalf of Alba from the following:

  • Iain Emerson, the founder, with Mr Tannock, of SFM and the sole director of Alba since its incorporation by him in 2009;
  • Sian Emerson, his wife, who was involved in various facets of SFM’s activities;
  • Paul Goodwin, a freelance marketing agent, who was involved in the early sponsorship of the Scottish national football team and is now Director of the Scottish Football Supporters Association;
  • Edward Robinson, a Constable with Strathclyde Police Force until his retirement in 2011;
  • Ian Black, journalist and author;
  • Craig Brown, who was an employee of the Scottish Football Association (“SFA”) for some 16 years from 1986 and who managed the Scotland Football team from 1993 until 2001;
  • Hamish Campbell Husband, a Scotland football supporter and a member of the West of Scotland Tartan Army;
  • Dr Andrew McArthur, an academic and Scotland football supporter, now involved in marketing;
  • Charles (“Chick”) Young, who has worked in football journalism in the newspapers and on radio and television for over 40 years;
  • Archibald (“Archie”) MacPherson, a well‑known football commentator from 1969 to the present day;
  • Richard McBrearty, curator of the Scottish Football Association Museum Trust (the Scottish Football Museum) since 2004 and the SFA’s appointed historian to FIFA;
  • Graeme Donohoe, a feature writer for the Sun newspaper for the last 18 years and since 2007 their official Tartan Army reporter;
  • William Hunter, a keen supporter of the Scotland football team since 1978 and currently secretary of the Falkirk District Tartan Army;
  • Robert Watson, a Scotland football fan since the mid‑late 1970s;
  • Sean Graham, a Scotland football fan who works in the archive industry of the BBC, is a freelance voluntary contributor to official programmes for Aberdeen FC and Montrose FC and has provided articles for The Famous Tartan Army Magazine;
  • Robert Moore, a Scottish football fan who attends home and away games as often as possible as a member of a small supporters club, Tartan Army Sanquhar, who have a large flag which they take with them to matches all over Europe; and
  • Edward Christopher, a professional musician who attends international matches, has played at Hampden Park before and after games and in 2006 recorded a World Cup song, “The Lion roars”, which contained references to the Tartan Army.
  • Ian Adie (see above ‑ he gave a further witness statement which was put in on behalf of the defender).

Of these, only Mr Emerson gave oral evidence.  As in the case of the bulk of the pursuer’s witnesses, the other statements lodged by Alba were taken as evidence without the need to call the makers of the statements to give oral evidence.

[11]      Though this case does not turn ultimately on issues of disputed fact, it is convenient at this point to say something about the credibility and reliability of the four witnesses who gave evidence.  All of them were credible in my view, in the sense that they were all endeavouring to tell the court the truth as they thought it to be.  In terms of reliability, however, I had some difficulty with the evidence given by Mr Emerson and Mr Tannock.  It seemed to me that they were quick to minimise the role played by others in particular ventures, and equally quick to attribute blame to others when matters did not go smoothly.  Mr Emerson and Mr Tannock worked together for a time at SFM and each in his evidence was anxious to denigrate the other.  While these opinions may have been genuinely held at the stage of them giving evidence in court, I could not accept that they could have worked so closely together for a significant period if they had held such views at the time.  In addition, I found Mr Emerson’s evidence in relation to his relations with the pursuer to be self‑justifying.  Mr Shields and Mr Lawson both gave evidence in a calm and moderate way and I found their account to be more reliable.  There were not many instances where there was a direct conflict of evidence, but where there was such a conflict I had no difficulty in preferring the evidence given by Messrs Shields and Lawson.

 

The Development of the Tartan Army “brand”
[12]      It is necessary at this stage to say something about the development of the Tartan Army mark, its exploitation by Ian Adie and companies associated with him, and the circumstances in which he permitted Mr Emerson to produce the Magazine.  The early part of the narrative can be taken from Ian Adie’s three witness statements lodged in process.  His evidence was largely uncontroversial.  His brother Alan Adie features in this narrative, but when I refer simply to “Mr Adie” I am referring to Ian Adie.

[13]      Mr Adie had always been an avid Scotland football fan.  By about 1996 he had travelled to Scotland games around Europe for many years.  He was aware of the name “Tartan Army”;  the term was well‑known but in his view (before he registered the Trade Marks) had no “physical presence”.  He thought the term was originally created by the media.  He had the idea of developing the Trade Mark because he noticed that the name only ever appeared in the media and never on any merchandising.  He thought that the World Cup in 1998 (for which Scotland qualified) would be a great opportunity to use the name.  He found a Trade Mark attorney who guided him through the process of registering Trade Marks for the words “The Tartan Army” and “Tartan Army” in the UK in Classes 24, 25 and 27.  These were Trade Marks 2119111, 21375384 and 2181028.  At the same time Mr Adie registered Trade Marks in the United States, Canada, Australia and New Zealand.  He also designed (with Mr Keith Lumsden) a tartan which he registered both as a UK Design and with the Scottish Tartans Society.  Mr Adie was keen to take the brand to what he thought of as the massive Scottish diaspora.  He regarded it as an entrepreneurial activity which had the effect of turning the name “Tartan Army” into a brand.  According to Mr Adie, the media regarded it at the time as a business coup.  There was no inherent value in the mark at that time and no established market.  The key factor, according to Mr Adie, was the fact that Scotland had qualified for a World Cup.  The success of the brand was linked to the success of the Scottish football team.

[14]      I have already mentioned that the Trade Marks were taken out by SMML.  The Tartan Army Limited (the pursuer) was incorporated on 1 December 1997.  Although SMML did not assign those Trade Marks to the pursuer until January 2006, Mr Adie used the new company to help exploit the Tartan Army Trade Mark from its incorporation.  When I refer to Mr Adie’s activities in connection with the Tartan Army Trade Mark, I include the activities of both SMML and the pursuer.

[15]      From about 1996/1997 until he sold the business in 2006, Mr Adie used the Tartan Army Trade Mark for the production of supporters’ merchandise of the sort which the average supporter might take to a game, viz a T‑shirt, a cap, a scarf, and a banner.  He also used the Tartan Army tartan to produce tammies.  Sales were never spectacular.  He licensed the Trade Mark to Kinloch Anderson, kilt makers, and to Thistle Products for fixed terms of two or three years.  Those licences ended long before the Trade Marks were assigned to the pursuer.  Mr Adie thought that the licensees did not do very well with the mark.  Its attraction being limited to the football season, the mark “peaked” very quickly.  Nonetheless, the 1998 World Cup in France was, in his words, “brilliant”.  As Mr Adie saw it, they had Trade Marked and created the brand.  They brought out a song, “Scotland Be Good” (a take on Chuck Berry’s “Johnny B Goode”), to help promote it.  The song went to the top of the Scottish charts and, again in Mr Adie’s words, “helped to bring focus to the merchandising” by getting the Tartan Army brand into the media.  News of the impending Trade Mark was reported in the Daily Record and other newspapers.  There was a double page spread in the Sun featuring Mr Adie as a Tartan Army fan.  This sort of exposure gave the brand credibility, belief and passion.  Mr Adie explained that they made some money from the brand (eg from the sale of scarves) “but not a lot”.  They were at that time less focused on the business side of the venture and more excited by being “mini‑celebrities”, albeit only for a short space of time.

[16]      It was in about 1996/1997 that Mr Adie met Robert Shields, who was working for the Daily Record and reported in that newspaper on the impending Trade Mark.  The Daily Record became, in effect, Mr Adie’s media partner.  For the 1998 World Cup in Paris there was a Tartan Army bus decked out in tartan, supplied by the Daily Record and sponsored by Stagecoach.  Mr Shields was the “bus commander” there.  The Daily Record entered into an agreement which ran for about six or eight months in 1998 in terms of which they had access to the brand and the song and they in turn agreed to promote the song and the merchandising.  There were specific projects undertaken, such as Tartan Army Nose Day in June 1998, a spoof on Red Nose Day, where everyone wore plastic tartan noses. 

 

Mr Adie’s Attitude to Publication of the Magazine – Contact with Mr Emerson

[17]      Mr Adie’s exchanges with Mr Emerson in September 2005 concerning publication of the Magazine features as a discrete issue in the case and it is therefore important to set out the evidence on this point.

[18]      Mr Adie’s evidence was to this effect.  Sometime in 2005 John Tannock and Iain Emerson came into his office wanting to use the Trade Mark in connection with a magazine they were thinking of launching.  Mr Adie was happy to help them.  His interests were in clothing and banners, etc, broadly covered by his UK Trade Marks in Classes 24, 25 and 27.  He had no Trade Mark in Class 16 (printed material, including magazines).  His account of the meeting and its aftermath was as follows (the quotation is from his first witness statement lodged by the pursuer):

“16.      …  I thought them using the trade mark for a magazine was a positive thing.  I thought we could work together and profit from more people using the brand.  They seemed nice enough guys.  I was very clear on the trade marks.  They very much knew that it was our brand but I thought that it would have been to both parties’ advantage to be accommodating.  The magazine was a natural fit for the brand.  If they had the magazine, we could have had ‘off the page’ offers and created merchandising.  If anything, I gave them advice.

 

17.       They then went off on their own path and we didn’t cross very much.  They did not pay me anything.  Classes 24 and 25 (clothing, banners, etc) are my area – not Class 16 (newspapers).  …  I was very familiar with the rights we had and would have acted to stop any person trying to infringe the trade mark.

 

18.       I knew that I could take action against any ‘passing off’ or infringement, and I did that, for example when Carlsberg Brewers started producing t-shirts with the printed slogan ‘Tartan Army … probably the best fans in the world’.  I didn’t get much in the way of damages but I showed that I would protect my brand where necessary.

 

19.       I didn’t grant a formal licence to Iain Emerson or John Tannock to use the Tartan Army trade mark.  They wanted to build credibility for the magazine and so wanted a firm commitment that I was okay with it.  So I sent an email to Iain Emerson on 2 September 2005 …”

 

Mr Adie’s email to Mr Emerson on 2 September 2005 is headed “Use of Trade marks etc.” and is in these terms:

“For the avoidance of doubt, I have no issue with you producing a magazine entitled The Famous Tartan Army.  Furthermore it is my intention to work with you in the future and allow use of Trade marks, Intellectual Properties and Domain Names held by my companies in the name of The Tartan Army.

 

Regards

 

Ian Adie”

 

Returning to Mr Adie’s witness statement, he made these comments about that email:

 

“21.      …  This was only in relation to the magazine and, as I remember, Iain never used the magazine for the sale of products within the scope of our trade mark.  If he did, it never came to my notice.

 

22.       I never appeared in the Famous Tartan Army Magazine as far as I know.  I sold the Famous Tartan Army Magazine on various occasions during 2008 as part of my concession supplier contract at Hampden Park.”

 

Mr Adie continued in the following paragraphs to say that he never met Iain Emerson other than on the occasion on which he came to his office and has not spoken to him for at least 10 years. 

[19]      In his second witness statement lodged on behalf of the pursuer Mr Adie says that he had originally thought of doing a Tartan Army Magazine himself long before, when they started the brand, but ultimately did not think it was an idea which he wanted to follow because it would not have a wide commercial impact.  When he met John Tannock and Iain Emerson he did not believe that their proposal would get very far.  They were enthusiastic beginners trying to grow a fanzine, so he viewed them differently from the way in which he had viewed corporations approaching him in relation to the brand.  His reaction to them was shaped by their amateurism and he gave them the benefit of his business experience.  Had it been a commercial company he was dealing with he would have looked for commercial terms to be agreed before permitting them to use the Tartan Army name, but they were nice people having a good time, it was a friendly good‑humoured thing, and he might be able to use their magazine to advertise his merchandise or otherwise enhance the profile of the brand.  All they were doing was producing a magazine and, anyway, he did not have a Trade Mark over goods in Class 16 (newspapers).  Had they wanted to produce and market merchandise then he would have wanted to discuss contractual licensing terms.

[20]      Mr Emerson’s evidence about this was in many ways quite similar.  He had established SFM Promotions Limited (“SFM”) with John Tannock in January 2005.  Through SFM, he and Mr Tannock established the Magazine together.  They produced a mock copy in 2004/2005.  The first issue of the Magazine came out in September 2005.  He was aware that Mr Adie had patented the phrase “Tartan Army” for T‑shirts.  There had been some publicity surrounding it.  Mr Emerson approached Mr Adie in relation to this, to make sure that he would not have a problem with the use of the name “Tartan Army” in the title of the Magazine.  They did not think he would have an issue with this.  When they received the email from Mr Adie of 2 September 2005 saying that he would have no issue with the name of the Magazine, he totally relied on that email to confirm the name;  otherwise he would not have gone ahead with the Magazine under that name.  Between September 2005 and July 2008 SFM brought out five issues of the Magazine.  They also organised the trip to Paris which included two nights’ accommodation.  This is referred to in more detail below.

 

Assignation of Trade Marks to the Pursuer, and Sale thereafter to Mr Shields and Mr Lawson

[21]      The conclusion of this chapter of evidence is the assignation by SMML to the pursuer of the UK Trade Marks and other intellectual property rights and the subsequent sale by Mr Adie, in May 2006, of the whole share capital in the pursuer to Mr Shields and Mr Lawson.  I have already touched on this.  Mr Shields explained that some years after the 1998 World Cup in France he and Mr Lawson approached Mr Adie with a view to joining in the Tartan Army operation, each of them bringing their own (complementary) skills to the table.  But this did not work out and it ended up with Mr Shields and Mr Lawson buying the Tartan Army Trade Marks from SMML.  The means chosen to achieve this involved the assignation of the Trade Marks and other intellectual property rights to the pursuer and, subsequently, the purchase of the whole share capital in the pursuer by Mr Shields and Mr Lawson.  The detail of that is not important.  Mr Emerson said in evidence, and I have no reason to doubt this, that he was not told in advance of the sale to Mr Shields and Mr Lawson, though he did meet up with them later when the arrangement made with Mr Adie was continued.

 

Development and Marketing of the Tartan Army Brand
[22]      What matters more for present purposes is the development and marketing of the Tartan Army brand thereafter.  For this it is convenient to refer to the evidence given by Mr Shields (though some matters were covered in more detail by Mr Lawson).

[23]      Mr Shields explained that by the time he and Mr Lawson purchased the Tartan Army brand, Scotland had failed to qualify for the Euros in 2000 and 2004 or for the World Cup in 2002 and 2006.  Despite this lack of success, their motivation was essentially to keep the Trade Mark out of the wrong hands, “to keep the Tartan Army tartan” as he put it.  The EU Trade Mark 5020672 was filed in March 2006 in the name of the pursuer on the instructions of Mr Shields and Mr Lawson who were by then in the process of buying the company.  They recognised that Scotland’s failure to do anything at international level since 1998 meant that there was a “wait and see situation” about the value of the Trade Marks ‑ the high value would come if Scotland qualified for a major tournament again ‑ but, despite the relatively large amount which they paid for the company, they were not in it to make money so much as to protect the mark.

[24]      Mr Shields described how they had protected the mark by preventing others, particularly two breweries which he named, from using the name “Tartan Army” on products and promotions.  On the other hand they did not mind if individuals flew home made banners or flags without asking their permission or if local Tartan Army clubs procured team polo shirts for their members using the “Tartan Army” mark.  That helped spread awareness of the brand.  What they wanted to do was stop commercial use of the brand without their permission.

[25]      In 2007 Mr Shields had the idea of creating a Tartan Army logo, which took the form of a distended or distressed saltire with the words “tartan army” emerging from the centre.  Since then that logo has been used on all the clothing produced by the pursuers, though it should be made clear that the Trade Marks are in the words “The Tartan Army” or “Tartan Army”, not in any logo. 

[26]      In February 2007, along with Lorna Maclean and Steve Jones, who were contacts in the clothing business, Mr Shields and Mr Lawson incorporated two companies, Tartan Army Merchandising Limited and Tartan Army Direct Limited, in order to develop and market Tartan Army merchandise, in particular a Tartan Army clothing line.  Ms Maclean and Mr Jones ran the day‑to‑day business of those companies.  They had a brief outlet in Debenhams for sales of Tartan Army merchandise and Tartan Army Merchandising Limited has its own website and sold merchandise online.  A range of clothing was launched in about 2007/2008, including jeans, T‑shirts, kilts, shirts, shorts and caps, and this received publicity in newspapers, particularly in the Daily Record.  Mr Shields said that the success of the merchandise really came back to how well the Scotland football team were doing.  He gave an example of the week prior to the match against Italy in March 2007, during which the merchandise all sold really well; but at other times it did not.  Ultimately the volume of sales was insufficient.  Tartan Army Merchandising Limited was dissolved in 2009 and Tartan Army Direct Limited was dissolved in 2010.  The stock remaining in May 2010, listed in an inventory lodged in process, remains in warehouses in Glasgow and Manchester.  Since then the release of merchandise has been through the pursuer direct.  A list of stock as at March 2015 was also lodged in process.

[27]      In 2007 they launched a charity single with Runrig, a version of “Loch Lomond”.  About 60,000 fans sang in Hampden Park to record it.  It raised over £50,000 for charity.  There was a lot of press coverage, particularly from the Daily Record.  There was a later charity CD, a version of “We have a dream”, again featuring fans singing on the disc, which also attracted publicity and claimed some success.

[28]      In 2006 and 2007 they organised some Tartan Army travel in conjunction with Barrhead Travel.  There were successful trips to Lithuania in September 2006 and to Italy in March 2007.  There was also a trip to the Faroe Islands in June 2007.  But the project ran into the difficulty that Barrhead Travel wanted everything to be paid up front, whereas Scotland football fans (perhaps all football fans) make decisions very much at the last minute, often depending upon how the previous match has gone.  The arrangement with Barrhead Travel came to an end by the end of 2007.  Mr Shields did not think that the pursuer made any money out of these trips.

[29]      Another project organised by the pursuer was Tartan Army gatherings in Aviemore.  There were three such gatherings, in 2006, 2008 and 2010 which were very successful;  but there had been none since that date.

[30]      Mr Lawson was friendly with the owner of the Renfrew Ferry, a pub in Renfrew, on the outskirts of Glasgow, and they organised Tartan Army pre-match parties there for fans who had been travelling a long way.

[31]      Mr Shields said that the pursuer had two websites, www.tartanarmy.co.uk and www.tartanarmy.com.  These websites were used for travel and other initiatives.  The online chat among the fans took place largely on the Tartan Army message board, which was separate from the pursuer.  He produced in evidence screenshots of the pursuer’s websites as at September 2010 and October 2011.  Iain McCaig was employed as the website manager for a while.  He left in 2011.  Mr Shields accepted that the pursuer’s website was down for a year or so after Mr McCaig left.  He explained that the www.tartan army.com website was now being sold, but they were in the process of re‑launching the website at www.tartanarmy.co.uk and were going to use it in the future to collect links to interesting football websites, to sell new merchandise that they were developing, and to advertise events which they were planning to organise, such as pre‑match parties at the Renfrew Ferry.  There was also a Facebook page on which fans posted comment.

[32]      In addition, the pursuer entered into sponsorship agreements with Belhaven Breweries and with Tennents.  Evidence about the agreement with Belhaven was given by Gordon Muir, marketing manager for Belhaven Breweries since October 2012, and Graham Baird, sales director with Belhaven for some 13 years.  When Mr Muir joined the company in October 2012 it had already entered into a sponsorship agreement with the pursuer in September of that year.  The idea from Belhaven’s point of view was to make their beer more relevant to Scottish football fans.  Three or four months after signing the agreement, circumstances changed causing Mr Lawson to want to change the sponsorship from Belhaven to Tennents, who were supplying his own pub.  The agreement with Belhaven was “unwound” and was replaced with an agreement between the pursuer and Tennents.  Evidence about the agreement with Tennents was given by Kenneth Taylor, Sales Manager with Tennents for the past five years and prior to that Sales Director (Northern Region) for Scottish Brewers and George Kyle, its head of sponsorship and PR.  Heads of Terms were signed in March 2013, which opened up the possibility of Tennents entering into an agreement with the pursuer to use the Tartan Army mark over a period of three years.  Tennents wanted the mark because it gave them the opportunity to promote their brand to the Tartan Army.  Mr Taylor was not personally involved in concluding the deal but his understanding was that the decision was made within Tennents to proceed with the sponsorship agreement.  The signing of the agreement between the pursuer and Tennents in March 2013 was confirmed by Mr Kyle.

 

Contact with Mr Emerson
[33]      Sometime in 2006, soon after Messrs Shields and Lawson bought the shares in the pursuer, they had a meeting with Mr Emerson and Mr Tannock.  Mr Shields gave evidence about this in his witness statement to this effect.  The Daily Record published an article saying that they had bought the rights to the “Tartan Army” name.  At that time the UK and EU Trade Marks were valid in all their original classes (the EU Trade Mark had not yet been registered, but had been filed in all classes for which the application was made).  According to Mr Shields, Mr Emerson and Mr Tannock realised that their relationship with Mr Adie was no longer valid and decided to approach them to see whether publication of the Magazine caused them any problems.  Mr Shields and Mr Lawson did not have any issue with them continuing to publish the Magazine, because it was just a fanzine:  “they were fans like us and it gave them a thrill being insiders at Hampden”.  He said that they were a small business run for fun, not for profit, and he doubted that they would have been making money from it at that stage.  Mr Lawson did not mention this meeting in any detail.  Neither did Mr Tannock.  Mr Emerson’s evidence was that it was Messrs Shields and Lawson who approached him to discuss how to develop the brand.  Mr Emerson says, though this is disputed, that Messrs Shields and Lawson talked about publishing content from the pursuers in their magazine and said that they loved the idea of the magazine.  Nothing turns on this difference.  There was a meeting, and Mr Shields and Mr Lawson had no difficulty with continuing the arrangement whereby Mr Emerson could continue to publish the Magazine. 

 

The Origins of the Dispute between the Parties
[34]      At some time in 2007 Messrs Shields and Lawson discovered that Mr Emerson and Mr Tannock were booking a train for a qualifying match against France in Paris ‑ a qualifier for the 2008 European finals ‑ and were making money out of it.  By the time they found out about it, it was a fait accompli ‑ it had been advertised on the message boards and fans had bought tickets.  They spoke to Mr Emerson and Mr Tannock about a month before the trip, in about August 2007.  They told them that that was not part of what they had given them permission to do and that it was infringing their Trade Mark.  According to Mr Shields, Mr Emerson and Mr Tannock were contrite, not realising that they had overstepped the mark and assured them that they would not be doing any more travel after that Paris trip.  Mr Shields says that he did not realise at that time that Mr Emerson and Mr Tannock had got the Scottish Sun involved in the project.

[35]      As far as Mr Shields was concerned, the Paris trip meant that Mr Emerson and Mr Tannock had overstepped the mark.  There were more than 600 fans on the trip, there was a bus with the “Tartan Army” name on the side of it, and it was all publicised in Scotland on Sunday on 16 September 2007.  Mr Shields and Mr Lawson decided that they had to draw a line.  On 2 October 2007 they wrote a letter on behalf of the pursuer telling them to stop acting in this way.  They concluded by saying that they needed Mr Emerson’s and Mr Tannock’s written assurance that any events, promotions, merchandise or sponsorships beyond the general remit of publishing a magazine must have the full knowledge and express permission of the pursuer.  They went on to say that they saw no reason why the pursuer and the Magazine could not work together in future for everyone’s benefit.  There was no reply to that letter.  Mr Emerson’s evidence was that this letter of 2 October 2007 came out of the blue.  I do not accept that.  I find that it followed complaints from Messrs Shields and Lawson about the trip as described above.

[36]      The Paris trip was followed by a trip to Amsterdam in 2008 in a cruise ship carrying about 1,600 Scotland fans.  This was advertised in the Magazine and places on the trip could be booked through the Magazine.  The Sun newspaper promoted the trip in an article called “Tartan Army Navy II”.

[37]      The problem as Mr Shields saw it was not simply that the Sun and the Magazine were using the Tartan Army name without paying for it.  It was also that it was all marketed as being a Tartan Army enterprise.  The publicity material for the Paris trip, while formally in the name of “The Famous Tartan Army Magazine”, was printed with the words “famous” and “magazine” in such small print that the impact on anyone seeing it would have suggested that it was being organised by those owning and promoting the Tartan Army, viz. the pursuer.  If things went wrong the fans would look to the pursuer to sort it out.  Not only would that affect the pursuer financially, it would also affect the reputation of the brand.  Quite apart from that, travel trips were one of the things that Mr Shields and Mr Lawson thought they could use in the future to generate some financial return for their investment.

 

Withdrawal of Permission
[38]      It is not necessary to go into any more detail, because the pursuer no longer insists on its conclusion for count and reckoning in respect of past infringements of its Trade Marks  and/or passing off.  But the concerns about the use of the Tartan Army name continued.  On 31 July 2008 Mr Shields and Mr Lawson emailed Mr Emerson in the following terms:

 

“Dear Iain,

 

Following a meeting of Tartan Army.com this morning, it has been decided to withdraw any previous permissions you had to use the registered trade mark ‘Tartan Army’ in connection with ‘The Famous Tartan Army Magazine’.

 

This decision takes immediate effect and will be confirmed to [you] in writing by our patent solicitors.

 

Regards

 

Bob Shields and Don Lawson”

 

That email was followed by letters dated 15 August 2008 from Pinsent Masons, solicitors acting for the pursuer, to a number of people including Mr Emerson, requiring each of them to sign a number of written undertakings by 22 August 2008.

 

SFM:  Cessation of Trading and Assignation of Intellectual Property Rights to SETT and thence to Alba
[39]      SFM ceased trading in July 2008.  As a result of disputes between Mr Emerson and Mr Tannock, it was put into liquidation on 8 October 2008.  It was dissolved in 2009.  On 4 November 2008 Mr Emerson, Mr Tannock and Mr Reifler of SETT incorporated Alba Football Fans Limited.  Intellectual property rights were assigned by SFM to SETT on 18 November 2008, and from SETT to Alba on 20 November 2008.

 

Commencement of Proceedings
[40]      No undertakings were forthcoming from Mr Emerson, Mr  Reifler or SETT in response to the email of 31 July 2008 and subsequent solicitors’ letters.  As a result, the pursuer commenced this action early in 2009.

 

The Tartan Army Name and Mark
[41]      Evidence about the Tartan Army name was given by a number of witnesses including the main players in this litigation, Mr Shields, Mr Lawson, Mr Tannock and Mr Emerson.  Although there was little dispute as to the origin and general characteristics of the name, its ability to act as a mark was hotly contested.  Accordingly it is necessary to flesh out the general understanding of the name, how it came about and what it represents.  I do so by reference to the evidence given by the individual witnesses.

 

Mr Adie
[42]      It is sensible to begin again with Mr Adie, since it was he who first saw the commercial potential of the term.  His understanding was that the term was originally created by the media in connection with Scotland football fans, supporters of the Scotland football team.  Having taken out Trade Marks and been involved, with others, in marketing the brand, he was in no doubt that “Tartan Army” existed in the public domain as a Trade Mark.  It had a worldwide reputation.  People wear the Trade Mark “all over the place”.  You still see the flags at any Scotland match in Hampden Park with the registered Trade Mark.  It is a brand name known by any and every person, from five‑year‑olds to grannies.  The whole country knows the name.  Because the activities of the football team are seasonal, the brand does not have the same recognition at all times of the year.  To that extent it could be deemed an event merchandising brand.  It was well received by the public in 1997/1998 but who would have predicted that Scotland would not qualify for 18 years after that?  The brand, in his view, is therefore to some extent dormant “until this Scotland team sparks up again”.  Whoever owns the brand will have a lucrative business opportunity if Scotland qualify in the future.  It has never been a high street brand but it is a very important event brand.

 

Mr Shields
[43]      Mr Shields is a director and secretary of the pursuer.  He has spent his entire working career as a journalist, working his way up to a position as chief writer, columnist and assistant editor on the Daily Record.  Since retirement he has bought a pub which he runs as a sole trader.  He gave an account of his dealings with Mr Adie in connection with his association with the Daily Record and the Tartan Bus used at the 1998 World Cup in France.  His evidence was that the expression “Tartan Army” was coined in the 1960s and 1970s during the period when Scotland used to play England home and away on an annual basis.  The “Wembley Weekend” became a biennial tradition, and the expression “Tartan Army” was used to describe the invasion of London by the Scottish fans, “all kilted up”.  He thought that the term was now used to cover all Scottish supporters in all sports, but essentially it was about football fans.

[44]      Mr Shields said this about what the Tartan Army brand means in paragraphs 5 and 6 of his first witness statement:

 

“5.       Being a member of the Tartan Army means being part of a large fraternity, sharing a united passion for Scotland.  We look after each other.  If someone gets out of order then the others pull him back into line.  It’s a welcome crowd for each other and we ensure that we all maintain our good reputation.  There are no membership fees – if you’re watching Scotland or a Scot competing and it makes your heart beat faster, then you’re a member of the Tartan Army.

 

6.         Scotland supporters are often called ‘Tartan Army foot-soldiers’.  It implies that nobody has any rank, everyone is just a foot-soldier.  The Tartan Army have a very good reputation.  They fed off the bad reputation of the English, and the Tartan Army’s behaviour is always praised.  For example after France 1998, the city of Bordeaux took out a full-page advert thanking us for making the World Cup that much more special.  Everywhere we go we seem to be embraced.”

 

Mr Shields then went on to describe the World Cup in France in 1998 as the “sea change” in the development of the Tartan Army brought about by Mr Adie.

 

Mr Lawson
[45]      Mr Lawson’s account was similar.  He thought that the name “Tartan Army” originally came from the media, football commentators and journalists.  The media labelled the “invasion” of London by Scottish football fans in the early 1970s as an invasion by the Tartan Army.  Mr Lawson used to go to Wembley back in the late 1970s as well as to home internationals and was part of that crowd.  That was how he met Mr Shields.  He described the term “Tartan Army Foot soldier” as deriving from the “Army concept”:  “it’s like a modern‑day Braveheart but without the violence”.  The fans went all over the world, doing the “cultural thing” first, depending on where they were.  There were always copious amounts of beer, but it was football first, culture second and alcohol third.  They always learned the history of places they visited.  He considered that the reputation of the Tartan Army was second to none.  They were like ambassadors for Scotland.  They were known for their non‑violence.

 

Mr Emerson and Mr Tannock
[46]      I did not understand Mr Emerson or Mr Tannock to disagree with this description of what the expression Tartan Army meant, how it originated and what it referred to, though Mr Emerson did, of course, take issue with its distinctiveness and its capacity to act as a Trade Mark.

 

Other Witnesses
[47]      It is convenient at this point to mention the other witnesses and their understanding of the term Tartan Army.

[48]      Paul Goodwin has been involved in marketing for many years.  He is now a freelance, though he acted for many big companies until fairly recently.  He is also director of the Scottish Football Supporters Association.  He described “The Tartan Army” as a generic nickname used to describe every man who attends Scotland matches, home or away.  Although it is an unofficial title dating back to the 1970s, it is recognised by the likes of the Scottish Football Association.  Its use to describe supporters of the Scotland football team worldwide was similar to the use of the term “Barmy Army” to describe fans of the England cricket team.  He was unaware until a meeting in 2010/2011 that a Trade Mark had been registered over the term “Tartan Army” and he was shocked when he first heard about it.  If he were to see an item of clothing with “Tartan Army” on it he would think that it had been produced by fans or regional groups of fans, perhaps with some involvement from the Scottish Football Association.  He said that many of the Tartan Army fan groups produced T‑shirts and scarves and other such items for fundraising purposes, branded with the particular cause that they were supporting and with the words or logo “Tartan Army”.

[49]      Edward Colin Robinson was a police officer with the Strathclyde Police Force for 29 years before his retirement in 2011.  He was a photographer for the Magazine from the time it was founded until around 2015.  He had no particular involvement with the Scotland football team, supporting them as much as the next person but no more than that.  He was aware of the term “Tartan Army” as a generic term to refer to the Scotland football fans.

[50]      Sian Emerson is the wife of Iain Emerson and worked with him on the Magazine for a brief period in about 2009/2010 when she was between jobs.  Much of her evidence concerned the work carried out by Iain Emerson and Mr Tannock on the Magazine and about the deterioration in relations between the two of them, which she blamed on Mr Tannock’s conduct.  So far as concerned the “Tartan Army” mark, she was not aware until this action commenced of there being a Trade Mark over that name.  It was her understanding that the Tartan Army was not a brand.  She associated the term with the “foot soldiers”, the Scotland football fans attending Scotland matches, a group of football fans who “look out for each other”.  Although unaware of Tartan Army branded products, she was firmly of the view that she would not associate any such products with a company known as The Tartan Army Limited.

[51]      Ian Black is a journalist and author.  He has had a wide variety of other jobs.  He has a great interest in Scottish football, having been to every Scottish game since the 1978 World Cup in Argentina.  His account of what the “Tartan Army” means is typical of many:

“[4]      I would associate the Tartan Army with a bunch of unruly foot soldiers.  It is the only Army in the world with no officers, no generals or sergeants.  This involves each foot soldier marching to the beat of their drum.  It is no coincidence that they are the only Army in the world with no enemies.  Nobody is quite sure who invented the Tartan Army.  … “

 

He did not think it was morally right to try to make money from the Tartan Army name.  If he saw an item of clothing with “The Tartan Army” on it he would associate it with Iain Adie, who he knew had produced T‑shirts.

[52]      Craig Brown is a former manager of the Scotland football team.  He understood the term “Tartan Army” to refer to the supporters of the Scotland team as they are “affectionately known throughout the world”.  He had never heard of the pursuer, and if he were to see an item of clothing bearing the name “Tartan Army” he would associate that with the fans rather than the pursuer.

[53]      Hamish Campbell Husband is a fan of the Scottish football team and has not missed a home game since 1990.  He believes that the term “The Tartan Army” is a generic name used to describe fans of the Scottish national football team who attend the games.  Like others, he believes the phrase to have emerged in the 1970s, either at the 1974 World Cup or in connection with “Ally’s Tartan Army” in Argentina four years later.  Unlike others, he had an understanding that not all fans of the Scottish national football team would consider themselves to be part of the Tartan Army.  In 1988 he joined the West of Scotland Tartan Army and produced T‑shirts and other small‑scale items to sell to people who were visiting from Iceland and other places.  They approached Iain Adie to get his permission as they knew he owned the Trade Mark over “Tartan Army”.  He had no objection to the West of Scotland Tartan Army producing the T‑shirts on a small scale.  So far as concerned the present dispute, he said that if he were to see any goods or clothing bearing the name “Tartan Army” he would assume that they were produced by the people who owned the Trade Mark.  He would not, however, associate this with the pursuer.  He was not aware of the pursuer having a clothing line and, indeed, had not heard of them before receiving a letter informing him of the present court action.

[54]      Having been involved for about 20 years as a university‑based academic involved in teaching and research in the field of Urban Studies, Dr Andrew McArthur has been involved in the field of social marketing over the last 10 years or so.  He is the author of “Over the Top with the Tartan Army”, profits from the sale of which go to charity.  He attended his first Scotland game in 1970 and has followed many home and away games.  He described himself as a “first‑hand participant in what is known as the ‘Tartan Army’”.  That term had been used for many years both by Scotland fans and others at home and abroad to describe supporters of the Scotland national football team.  It had a particular resonance with the travelling fans who had left such a positive memory with host communities around the globe.  The Tartan Army ”has become a living part of Scotland’s proud culture and has made a positive contribution to how Scotland is viewed from outside”.  In his view anyone trying to close down the open use and celebration of the name “The Tartan Army”, particularly in the interests of personal financial gain, “is a national embarrassment and, in my eyes, guilty of identity theft and cultural vandalism”.  He knew of the pursuer, The Tartan Army Limited.  He knew of the (Adie) brothers, and the fact that they had registered the Trade Marks and thereafter sold them on.  He thought it was fairly common knowledge.  However, he said that if he witnessed an item of clothing with “Tartan Army” on it, he would not necessarily associate that with anyone in particular.  There were, he said, various forms of merchandise out of there in the marketplace associated with the “Tartan Army”.

[55]      Charles (or Chick) Young has worked for over 47 years in journalism, for most of that time in football journalism.  In that capacity he has covered the Scotland football team and travelled with it.  He associated the term “Tartan Army” with supporters of the Scotland football team.  He first became aware of the phrase in the 1970s.  He was aware that some people thought that the term extended to supporters of the Scotland rugby team and was even used by golf fans supporting Scottish players.  He thought it extended to all Scottish national sports teams.  The idea of anyone owning the phrase “Tartan Army” was ridiculous.  If he were to see an item of clothing bearing the name “Tartan Army” he would associate that with members of the Tartan Army itself.  He certainly would not think that clothing bearing the term “Tartan Army” had originated from a company known as The Tartan Army Ltd:  it was “insane” to suggest that.  He had not heard of the pursuer prior to this case and had no awareness of any clothing line operated by them.  He had written articles for the Magazine over the last 10 years.

[56]      Archibald (“Archie”) MacPherson is a well‑known journalist and broadcaster.  He has commentated at five World Cup competitions in which Scotland were taking part.  He said that the term “Tartan Army” had a bit of history to it.  In the 1960s and 1970s there was a lot of violence associated with fans of the Scottish team when they disgraced themselves in London.  This all changed in Seville in 1982, when Scotland played Brazil and there was a carnival like spirit.  He described that as the birth of a body of people who enjoyed football celebrations, making a change from how the fans used to behave.  The term “Tartan Army” then gradually began to be used more by the public.  Mr MacPherson had never heard of the pursuer.  Like Chick Young, he said that if he were to see an item of clothing bearing the words “Tartan Army” he would associate that simply with a supporter of the football team and not with any company such as the pursuer.  He was not aware of “Tartan Army” being a registered Trade Mark.  Nor was he aware of the existence of the Magazine.

[57]      Richard McBrearty has been employed by the Scottish Football Association Museum Trust (“the Scottish Football Museum”) since 1999 and has been curator there since 2004.  He was able to trace the origins of the term “Tartan Army” to an article printed in the Dundee Courier in 1934.  The term possibly applied to supporters of the Scotland football team in the 1920s and 1930s.  Much of the clothing worn by members of the Tartan Army is to be seen in old photographs of Scotland supporters from the 1920s.  From a very early time Scotland fans travelled in large numbers to the match with England at Wembley every two years and supporters’ groups, known as “Wembley Clubs”, were organised to plan and finance the Wembley trip.  Football specials were laid on by train operators.  Terms such as “invasion” were used to describe the influx of tartan wearing Scotland supporters.  Mr McBrearty was involved in setting up a small display at the museum on the Tartan Army in 2001.  The display panel described the Tartan Army as “a disorganisation rather than an organisation”.  For away games in hard to reach locations the size of the Tartan Army could be as small as about 1,000 “foot soldiers”, while for important games closer to home there could be over 20,000 fans making the trip.  The “Tartan Army” was an important aspect of the fan culture surrounding the Scotland football team.  Not everyone who was a Scotland football fan would instinctively identify themselves as being part of the Tartan Army, but a majority of supporters would associate themselves with the term and its “associated connotations”.  “At its essence the Tartan Army represents an intangible expression of Scotland fan culture”.  It was a very important feature of the Scotland support and a definitive term for those who identify themselves as being part of the Tartan Army.  He was aware of the pursuer.  If he were to see an item of clothing with the term “Tartan Army” on it he would associate that with the fans as part of their identity rather than with any particular company.  In 2006 he set up an exhibition devoted to the Tartan Army football supporters and used the term for the exhibition title.  He neither sought nor obtained permission to use the term.

[58]      Graeme Donohoe is a Feature Writer for the Sun newspaper.  In 2007 he was made official Tartan Army reporter for that newspaper.  In that capacity he would be involved with the Scottish fans in various football stories and features.  The fans were considered one of the Scotland team’s best assets.  Mr Donohoe said that there was often a lot of unofficial merchandise at football games which made use of the term “Tartan Army”.  He himself would not associate goods bearing that name as originating from the pursuer.  He thought it odd that the pursuer (or Mr Adie) had obtained a Trade Mark:  “the idea that someone can come along and say I’ll take that name for myself seems baffling”.  Mr Donohoe said that he had never worked for the Magazine but, in his capacity as official Tartan Army reporter for the Sun newspaper, he would often be in contact with it.

[59]      William Hunter has been a warehouse supervisor since 2014.  He was previously employed by Asda.  He has followed the Scotland football team since 1978 both home and away.  He would associate the term “Tartan Army” with Scotland supporters.  He was currently secretary of the Falkirk District Tartan Army.  He had never heard of the pursuer.  Any T‑shirts available for the Falkirk District would be made by a producer to the order of the Falkirk District and not by any other bodies such as the pursuer.

[60]      Robert Watson was in the armed forces before moving on to manage a public house.  For the last 10 years he has been employed as a 7½ tonne tow driver.  He associated the term “Tartan Army” with the supporters of the Scotland football team.  He put the origin of the phrase at Wembley in 1977, a reference consolidated in Argentina in 1978 when people began to sing songs about the Tartan Army.  He would associate clothing bearing the term “Tartan Army” with supporters like him.  He had heard of the pursuer and of the website.  He was “shocked that it was possible to register a group of people as a business going concern”.  He could not understand how anyone could Trade Mark the term “Tartan Army”.  It was just not right.  The Tartan Army was really a big family.  He would not associate clothing bearing the term “Tartan Army” with the pursuer.  The majority of fans would not know that the pursuer existed.  He would associate such clothing with the fans.

[61]      Sean Graham is employed in the archive industry of the BBC and works as a freelance voluntary writer in official programmes for Aberdeen and Montrose.  He attends the Scotland football team home games as often as he can.  He too would associate the term “The Tartan Army” with the Scottish supporters who attend games, particularly games abroad.  He had never heard of the pursuer.  He had never seen any items originating from the pursuer.  He had provided articles for the Magazine.  It was enjoyed by supporters and players alike.

[62]      Robert Moore is employed as a forester.  He follows the Scotland football team and goes to home and away games as often as possible.  He associated the term “Tartan Army” with the fans.  He belongs to a small club called the “Tartan Army Sanquhar” who have a large flag and take it all over Europe to support the national team.  He had not heard of the pursuer.  If he were to see the term “Tartan Army” he would associate it with the Tartan Army itself (or a member of it) or someone associated with the Magazine.  He used to purchase the Magazine.

[63]      Edward Christopher is a professional musician and owns a music shop.  He has followed the Scotland football team for very many years.  Since 1990 he has attended functions for the Tartan Army and played at various gigs, including at Hampden both before and after games.  He also recorded a World Cup song in 2006.  He associated the term “Tartan Army” with the Scotland supporters, particularly at away games.  It had never, to his knowledge, been a trade name or anything like that.  If he saw an item of clothing bearing the words “Tartan Army” he would not associate it with the pursuer.  Nearly every group of fans has their own merchandise with “Tartan Army” on it.

 

The Pursuer’s Case on Infringement and Passing Off

[64]      The pursuer’s case on infringement and/or passing off is contained principally in Article 10 of Condescendence.  The pursuer alleges that both it and the defender have on‑line services whereby they offer identical goods and services.  More specifically, the pursuer alleges that both businesses provide travel services;  and that both publish magazines or periodicals (the pursuer publishes a monthly newsletter while the defender publishes a quarterly magazine).  There are no other allegations of identical goods or services being offered.

 

Submissions
[65]      Mr Mackenzie (for the pursuer) and Mr Young (for the defender) lodged detailed Notes of Argument before the commencement of the Proof.  These were prepared after the productions and witness statements had been lodged but obviously before any oral evidence and cross‑examination.  In the event there was very little change to the evidence as a result of the examination and cross‑examination of the witnesses.  Accordingly, both parties were able to use their original Notes of Argument as a reference point in their closing submissions.  To accompany his closing submissions Mr Mackenzie handed in a Speaking Note which, in effect, updated his earlier Note of Argument to take account of the further evidence.  In addition I was provided with over 80 authorities (including textbooks and extracts from statutes and regulations).  This goes some way to explaining the length of this Opinion.  I am grateful to both parties for their assistance.

 

Pursuer’s Submissions
[66]      Mr Mackenzie submitted that although the action against the first two defenders had been settled and that against Mr Emerson personally had been dismissed, nonetheless the complaint remained fundamentally the same.  The defenders, Alba, through Mr Emerson, were producing the magazine and offering travel services to a substantial number of Scotland football fans.  Whether or not they were making a profit, they were all engaged in a substantial commercial enterprise of which the magazine was an integral part.  The present complaint was a simple one: Alba was using the pursuer’s registered Trade Mark without its permission.  It was true that at one time a separate legal entity, SFM, had had permission to use the registered Trade Mark for a magazine, but Alba had never had that permission and did not have it now.  Any permission to use the mark was in any event limited to the production and publication of the Magazine and, furthermore, it was withdrawn on the 31 July 2008 (if it was still in existence at that time).

[67]      There was much in the pleadings and evidence that was not disputed.  The existence of the pursuer’s registered Trade Marks was not in dispute, though their validity was.  The term “Tartan Army” was probably first conceived in the 1970s, though it may have been even earlier than that.  The pursuer regards itself as the “custodian” of the “Tartan Army” brand.  Alba denies that the term “Tartan Army” is or is capable of being a brand, but it does not suggest that anyone else regards itself as custodian of the name.  The Tartan Army is not a thing;  it is simply a phenomenon, a collection of Scotland fans, usually football fans.  It is not an organisation.  It is best described, in Mr McBrearty’s words, as a “disorganisation”.

[68]      There was an important distinction between, on the one hand, the phenomenon of the Scottish travelling support (the “disorganisation”) and, on the other, the commercial activity carried out by the pursuer using the mark “Tartan Army”.  Once that distinction was understood, the difference between the descriptive use of the term “Tartan Army” by the fans and the commercial use of the mark “Tartan Army” by the pursuer became clear.  It was the commercial activity of the defenders, including Alba, and not the use by fans of the (non‑commercial) descriptive term “Tartan Army”, that was the focus of the action.  The pursuer was rightly tolerant and supportive of the use of that term by fans or local fan groups, and their creation of their own flags and scarves denoting membership of the travelling support, but that was quite different from the commercial exploitation of the term by the defender.

[69]      There was a dispute on the pleadings as to the pursuer’s trading and charitable activities.  The former were denied while the latter were met with “not known and not admitted”.  That approach showed a lack of candour on the part of the defender (and of Mr Emerson), a lack of candour which carried through into the defender’s averments about the permission granted to SFM to publish the magazine, the suggestion that somehow its rights (or permission) were assigned to the defender, and into the defender’s denial of its own historic and current use of the mark, much of which was well documented.

 

The Licence
[70]      The defender appeared to rely upon the licence, if it was a licence, or permission, granted in the email of 2 September 2005 from Mr Adie to Mr Emerson.  That argument must fail for a number of reasons.  First, even if what was said in that email could be regarded as the grant of an informal licence, the licence was a licence to produce a magazine, not to do anything else in terms of services on merchandise.  Second, the licence was granted to SFM, through Mr Emerson its director.  Third, any licence was terminated expressly by email to Mr Emerson of 31 July 2008.  Fourth, any such licence was personal to SFM and not assignable by it:  Dorling Honor Marine [1964] Ch 560, Terrell on the Law of Patents, 15th Edition, paragraph 10.50.  The effect of termination of the licence on 31 July 2008 was that SFM had no right to continue to use the mark.  Any goodwill generated by its use of the mark up to that time accrued to the benefit of the pursuer.  On its incorporation on 4 November 2008 Alba had neither goodwill, permission, licence or any other right in or in respect of the Trade Mark;  and it never acquired any such right thereafter.

 

Passing Off
[71]      The claim in passing off did not depend upon the validity of the Trade Marks.  The test was uncontroversial: “a man is not to sell his own goods under the pretence that they are the goods of another man” (Perry v Truefitt (1842) 5 Beav. 66, 73).  For a name, mark or get‑up to be capable of being protected by an action in passing off the public must rely on it, in the sense that they recognise it as denoting the quality or character of the goods of one trader, even if they cannot identify that trader by name or know what role he plays in respect of the design, manufacture, or distribution etc. of the goods.  It is irrelevant that the goods passed off are as good or better than those of the pursuer or whether they are sold at a higher price:  Bowden Wire Ltd v Bowden Brake Ltd (1913) 30 RPC 609, Spicer Bros Ltd v Spalding & Hodge Ltd (1914) 32 RPC 52.  There were two forms of passing off, the “classic form” and the “extended form” (as explained by Lord Diplock in Warninck (Erven) Besloten Veenootschap v J Townend & Sons (Hull) Ltd [1980] RPC 31 (the Advocaat case)), but it was not necessary to rely upon the extended form in this case.  The classic form of passing off involved a three‑part test, described by Lord Oliver in Reckitt & Colman Products Ltd v Borden Inc [1990] 1 WLR 491 (the Jif Lemon case).  In order to be actionable:  (i) some goodwill or reputation must attach to the goods or services;  (ii) there must be a misrepresentation (whether or not intentional) by the defender leading the public to believe that the goods or services offered by him are the goods or services of the pursuer;  and (iii) the pursuer must have suffered damage by reason of the erroneous belief engendered by the defender’s misrepresentation that the source of the defender’s goods or services was the same as the source of those offered by the pursuer.

 

(i)         Goodwill
[72]      As to goodwill, the courts do not accept that a business with customers in this country may exist without goodwill.  An individual working from home has goodwill in his business (Stacey v 2020 Communications Plc [1991] FSR 49), as does the owner of a mobile fish and chip shop in a holiday resort, despite the transient nature of the customers (Stannard v Reay [1967] FSR 140).  Relevant goodwill can be built up over a short period, in a few weeks:  Stannard v Reay.  Trivial goodwill is not enough (Hart v Relentless Records [2003] FSR 36), but being a “small player” does not prevent goodwill being established: Stannard v Reay, Stacey v 2020 Communications and Teleworks v Telework Group [2002] RPC 27.  The pursuer may rely upon the whole use of the mark, name or get‑up giving rise to its goodwill up to the date on which the defender commences the infringing activity.  The difference between the “distinctiveness” test for passing off and the “goodwill” test for registration of the Trade Mark was described by Jacob LJ in Phones 4U Ltd v Phone4u.co.uk Internet Ltd [2007] RPC 5 at paragraph 25:

 

“The nature of the inquiry as to whether a mark is suitable for registration without proof of distinctiveness is different from that as to whether a plaintiff in a passing off action has established a goodwill in the name, badge or insignia relied upon.  This is hardly surprising – for registration one must be reasonably sure that the mark has really become a trade mark to most relevant people – to grant a monopoly on a lesser test would be contrary to the policy behind the requirement of distinctiveness.  So, for example, if it is necessary to prove distinctiveness, proof that a badge was well-known but only in a small area, would not be enough.  Yet an action for passing off would lie in respect of the use of a deceptively similar badge in that small area.  Cases about quasi-descriptive names of hairdressers, restaurants and so on are not uncommon.  An example mentioned in argument was Stannard v Reay [1967] RPC 589 ("Mr Chippy" used for a mobile fish and chip van on the Isle of Wight for 3 weeks – held enough use to create a protectable goodwill).  Similarly under our old law some marks were regarded as so non-distinctive that they could never be registered.  Yet passing off cases on such marks could succeed (e.g. ‘Perfection’ for soap refused, Crosfield's Application (1910) 27 RPC 433, passing off successful, by consent, Crosfield v Caron (1912) 29 RPC 47.  W&G for taxis refused, W&G Du Cros Ltd’s Application [1913] AC 413, but the subject of a successful passing off action, W&G Du Cros v Gold (1913) 30 RPC 117).”

 

Once created, goodwill does not simply disappear;  it is maintained even if the trading activity ceases or reduces:  see Treadwell’s Drifters Inc v RCL Ltd 1996 SLT 1048.  In Jules Rimet Cup Ltd v The Football Association Ltd [2008] FSR 10 the court noted that the character in which the goodwill was claimed (“World Cup Willie”) had quite reasonably lain unused since 1966 when the World Cup had last been played in England, but this did not mean that the Football Association had abandoned its goodwill in it ‑ it was simply “on the shelf” until it became relevant again.

[73]      On the facts of this case, the relevant date was a date in November 2008 when Alba was incorporated and the infringing activity by Alba started.  There was no doubt that by then the pursuer had generated goodwill in the mark “Tartan Army”.  The commercial use of the mark started with the filing of the first of the pursuer’s Trade Marks on 19 December 1996.  Since then there had been a consistent, intense, high‑profile use of the mark in terms of advertising, merchandising and the provision of services.

 

(ii)        Misrepresentation
[74]      Whether there had been misrepresentation was a question of fact to be decided in all the circumstances.  Mere confusion between the respective goods or services was not enough;  there had to be some misrepresentation by the defender giving rise to that confusion.  This could be inferred from all the circumstances, including the extent of the confusion:  see Woolley v Ultimate Products Ltd [2012] EWCA Civ 1038.  But confusion was not necessary in order for there to be a finding of misrepresentation.  Typical factors relevant to assessing whether there has been misrepresentation, and the likelihood of the public being deceived or confused as a result, included:  the phonetic and visual similarities between the marks;  the nature of the marketplace and the circumstances in which the goods or services were sold or supplied;  the habits of ordinary purchasers;  and the nature of the goods or services themselves.  Reference was made to Sir Robert McAlpine Ltd v Alfred McAlpine plc [2004] RPC 36, Kitfix Swallow Group Limited v Great Gizmos Ltd [2008] [2008] EWHC 2723 (Ch) and Thistle v Thistle Telecom 2000 SLT 262, 264 (reciting the submissions of counsel).  The potential for confusion here was obvious.  The name of the Magazine was, in practical terms, the same as the pursuer’s mark.  The relevant consumer, a Scotland football fan, would notice the dominant element of the mark, namely the words “Tartan Army” and pay little attention to the word “Famous” (which was merely laudatory or promotional) and the word “Magazine” (which simply describes the product).  The website associated with the magazine (www.famoustartanarmymagazine.co.uk) was also apt to confuse.  Given the pursuer’s reputation in the commercialisation of the “Tartan Army” brand, relevant confusion was bound to occur, with consumers thinking that the magazine was another aspect of that commercialisation.

 

(iii)       Damage
[75]      As to the question of damage, Mr Mackenzie submitted that the very fact that Alba claimed to have developed goodwill using the mark “The Famous Tartan Army Magazine” showed that there had been a dilution or erosion of the pursuer’s own goodwill.  The value of a mark rests on the fact that a proportion of the public associate the mark and products bearing that mark with one particular trader.  Use of the same mark by another trader dilutes that goodwill ‑ even though the public do not consciously associate use of the mark by one with use of the same mark by another, the use of the same mark by both means that the mark will no longer be associated with the pursuer.  Reference was made to Irvine v Talksport Ltd [2003] FSR 35 and to McAlpine (supra) where the “elbowing out” of one co‑owner of goodwill by another was recognised as a head of damage in its own right.  The likelihood in this case is that the relevant public will assume that the Magazine and linked promotions are endorsed or approved by the pursuer.

[76]      In those circumstances passing off was established.  The court should sustain the pursuer’s third plea in law and grant interdict in terms of Conclusion 1.2.

 

Registered Trade Marks
[77]      EU Trade Mark 5020672 was originally a Community Trade Mark.  With the entry into force of Regulation No 2015/2424 amending Council Regulation (EC) No 207/2009, OHIM became the European Union Intellectual Property Office (EUIPO) and the Community Trade Mark became the EU Trade Mark.  Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union Trade Mark as amended by Regulation No 2015/2424 (hereafter the “EU Trade Mark Regulation” or “EUTMR”) now applied to the pursuer’s EU Trade Mark.  The Trade Marks Act 1994 (“the 1994 Act”) applied to the pursuer’s UK registered Trade Marks.  Although Alba attacked both the UK and the EU Trade Marks, the argument was presented mainly (though not exclusively) by reference to UK law.  There were no significant differences in the arguments or as to the outcome.

 

Validity
[78]      Mr Mackenzie sought to meet the argument presented by Alba that the Mark “Tartan Army” was not distinctive, was devoid of any distinctive character and/or was a sign (ie a phrase or expression) that had become customary in current language.

[79]      Section 1(1) of the 1994 Act defined a “Trade Mark” as meaning:

 

“… any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.”

 

The requirement that the sign be capable of distinguishing goods or services of one undertaking from those of other undertakings did not mean that the sign had to be capable of identifying the owner of the particular Mark.  The Mark must enable goods or services to be identified as pertaining to the owner of the Mark, whoever he was.  It operates, in effect, as a guarantee that all products bearing that Mark have been manufactured or provided under the control of a single undertaking to which responsibility for their quality may be attributed:  see in particular Merz & Krell GmbH & Co (Case C-517/99), Loendersloot (Case C-349/95), Philips v Remington (Case C-299/99) and Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc [1999] ETMR 11.  Here, the Mark was capable of being represented graphically, in the sense that the words “Tartan Army” can be written in a variety of forms.  Nor could it be said that the words were incapable of distinguishing goods or services of one undertaking from those of another.  All depended on context.  “Soap” cannot be registered as a Trade Mark for soap, since it is simply the common name for goods of that type and does not serve the essential function of a Trade Mark.  As Laddie J said in Re Registered Trade Mark “Jeryl Lynn” [1999] FSR 491 at paragraph 12:

 

“So, coining a new word or name for a new product and then marketing that product extensively under the name does not mean that the name automatically functions as a trade mark indicating origin.  Words are man-made vehicles for conveying information.  When created they are malleable and capable of taking on one or more meaning.  There is nothing inherent in the string of letters which makes up a word which renders the word more or less suitable to take on a particular meaning.  It is the way the word (or similar words) has been used in the past or is proposed to be used in the future which moulds the information conveyed by it.  The word ‘Mars’ when used in relation to astronomy designates a particular planet in our solar system.  The same word, when used in relation to chocolate confectionery products, is understood to refer to products from a particular trade source.  Likewise the words ‘Penguin’, ‘Golf’ and ‘Ford’ have acquired more than one meaning.  Furthermore words never completely lose their malleability.  Their meaning can change with time.  Even the word ‘Soap’ referred to by Jacob J could at one time have been pressed into service as a trade mark.  However when it was invented it was used to indicate a type of product rather than a particular trade source and so it has remained (although even it has now acquired an additional meaning indicating a particular type of television program).”

 

Laddie J went on in paragraph 14 to say that in a case such as that before him,

 

“… where the name has been used for many years before the application to register, it seems to me that the correct answer to the central factual issue of whether it has the relevant capacity to distinguish may be indicated by the response to a number of questions …”

 

He then summarised the questions as follows.  What is the product to which the word has been applied previously?  (Mr Mackenzie submitted that the answer here was: “None.”)  Has the word been used exclusively in relation to that product?  (“N/A” or “No.”)  Has it been used exclusively on the product as a designation of origin?  (“N/A” or “No.”)  Has it come to be recognised as a designation of origin rather than an indication of type by the relevant public?  (“No.”)  He concluded, at paragraph 25, as follows:

 

“… It may well be possible validly to register a sign which performs the essential function of a trade mark, notwithstanding the fact that it has some technical or descriptive impact as well.  But that does not mean that a sign which overwhelmingly performs a descriptive or technical function can be registered.  Such a sign is not capable of distinguishing within section 3(1)(a) of the Act.  Here, even if it had been shown that there was some trade mark recognition, it is clear that such recognition is trivial compared to the overwhelming descriptive meaning of the words.  Mr Hobbs accepted that it would be misleading for his client to use its trade mark on anything other than a vaccine containing a Jeryl Lynn strain of viruses.  I have no doubt that he was right to do so.  Those words mean a particular type of virus.  To use them on a vaccine which did not contain that type of virus would be a misdescription and deceptive for that reason.  In other words Mr Hobbs’ concession was necessary because the words JERYL LYNN are so clearly and primarily the appropriate technical identifier for a particular type of virus that a use in relation to a different type of virus would be misleading.”

 

The reference in that paragraph to the inability to register “a sign which overwhelmingly performs a descriptive or technical function” is, of course, a reference to a sign which overwhelmingly performs a description of the goods in respect of which registration of the Mark is sought:  see Merz & Krell (supra) at paragraph 41.  There is no product or service that is “Tartan Army”.  The Mark is therefore capable of distinguishing the goods or services manufactured or supplied by the pursuers (as owners of the Mark).

[80]      Mr Mackenzie referred to section 3(1) of the 1994 Act which identified in paragraphs (a)-(d) the four categories of things which could not be registered as Trade Marks.  He suggested that the defender must be relying upon (d), Trade Marks which consist “exclusively” of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade (i.e. to designate the goods or services in respect of which registration of the Mark is sought).  He referred again to Merz & Krell at paragraphs 40 and 41.  In the present case, however, it must be accepted that the term “Tartan Army” is used to describe the “disorganisation” which is the collective body of a Scottish football fans.  The pursuer has recognised the potential of Trade Marking that phrase and applying it to identified goods and services.  It can do so because the term “Tartan Army” is capable of distinguishing goods and services of one undertaking from those of another while, at the same time, operating as a badge of support, loyalty or allegiance.  The fact that a badge is a badge of allegiance does not prevent it being registered as a Trade Mark:  Arsenal Football Club Plc v Reed [2003] 3 All ER 865, In re Tottenham Trade Mark (unreported, 6 January 2003).  On the evidence in the present case, the challenge to registration of the Trade Mark must fail.  The witnesses called by Alba gave evidence fatal to Alba’s own argument because they demonstrated that they were capable of applying the Mark as a Trade Mark, identifying the pursuer’s goods by reference to the Mark;  and their only objections ‑ neither of which was relevant ‑ were that they were not aware of the identity of the company owning the Mark and/or that they disagreed with the concept of registering the name “Tartan Army” as a Mark.

 

Bad faith
[81]      Mr Mackenzie noted that Alba sought to attack the pursuers EU Trade Mark on the grounds of bad faith.  He referred to the guidance given in Pangyrus Ltd v OHIM (Case T ‑257/11) at paragraphs 66 and 67.  I need not quote from those paragraphs here.  What is alleged is that when it came to apply for its EU Trade Mark in 2006 the pursuer was already aware that Mr Emerson, through SFM, was producing The Famous Tartan Army Magazine.  Mr Mackenzie’s answer is a simple one:  SFM was only producing the magazine under license or permission from the then Trade Mark proprietor.

 

Non-use
[82]      Alba also sought to challenge the registrations held by the pursuer, or certain parts of them, on the ground that the Trade Marks were not put to continuing use in connection with the goods or services in respect of which they were registered within a period of five years following registration or thereafter if use was interrupted for a continuous period of at least five years.  Reference was made to section 46 of the 1994 Act and Articles 15 and 51 EUTMR.

[83]      Mr Mackenzie referred to Meta Handels GmbH v Soho House Limited (OHIM, Cancellation Division, 30 June 2015) at pages 3 and 8 for a summary of the proper approach to the question of non-use.  In Stichting BDO and others v BDO Unibank [2013] FSR 35 at paragraph 51 Arnold J quoted with approval the following summary, by Anna Carboni, sitting as an appointed person in the SANT AMBROEUS Trade Mark Application [2010] RPC 28 at paragraph [42], of the principles derived from relevant decisions of the Court of Justice and other bodies (for ease of comprehension, I omit reference to the cases which she cites):

 

“(1)      Genuine use means actual use of the mark by the proprietor or a third party

with authority to use the mark …

 

(2)        The use must be more than merely 'token', which means in this context that it must not serve solely to preserve the rights conferred by the registration …

 

(3)        The use must be consistent with the essential function of a trade mark, which is to guarantee the identity of the origin of the goods or services to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish the goods or services from others which have another origin …

 

(4)        The use must be by way of real commercial exploitation of the mark on the market for the relevant goods or services, i.e. exploitation that is aimed at maintaining or creating an outlet for the goods or services or a share in that market …

 

(a)        Example that meets this criterion: preparations to put goods or services on the market, such as advertising campaigns …

 

(b)        Examples that do not meet this criterion: (i) internal use by the proprietor; (ii) the distribution of promotional items as a reward for the purchase of other goods and to encourage the sale of the latter …

 

(5)        All the relevant facts and circumstances must be taken into account in determining whether there is real commercial exploitation of the mark, including in particular, the nature of the goods or services at issue, the characteristics of the market concerned, the scale and frequency of use of the mark, whether the mark is used for the purpose of marketing all the goods and services covered by the mark or just some of them, and the evidence that the proprietor is able to provide …

 

(6)        Use of the mark need not always be quantitatively significant for it to be deemed genuine.  There is no de minimis rule.  Even minimal use may qualify as genuine use if it is the sort of use that is appropriate in the economic sector concerned for preserving or creating market share for the relevant goods or services.  For example, use of the mark by a single client which imports the relevant goods can be sufficient to demonstrate that such use is genuine, if it appears that the import operation has a genuine commercial justification for the proprietor …"

 

Mr Mackenzie also referred to the judgment of the Appointed Person in Memory Opticians Limited Trade Mark Application [2016] ECC 15 at paragraphs 34-40.  As to what constituted “proper reasons” for non‑use, he referred to the judgment of the Court of Justice in Armin Haupl v Lidl Stiftung & Co KG (Case C-246/05) at paragraphs 48‑55.  Insofar as there was a complaint of non‑use here, the “Tartan Army” Mark was comparable to the “World Cup Willie” Mark which had quite reasonably lain unused for many years.

[84]      The evidence of use in the present case was extensive.  But as Mr Adie explained, the Mark is more akin to an “event brand”, the use of the Mark fluctuating with the success or otherwise of the Scotland football team and its participation in major championships.  Despite recent disappointing performances – the failure to qualify for recent major championships – the pursuer had taken opportunities via sponsorship agreements and promotions to demonstrate a commitment to preserving market share.

[85]      Under reference to the evidence, Mr Mackenzie then made detailed submissions concerning the particular classes protected by the different UK and EU Trade Marks.  He submitted that, in the circumstances of this case, the counterclaim for a declaration of invalidity and/or for revocation must fail.  The court should sustain the second plea in law for the pursuer and repel the fourth defender’s pleas in the counterclaim.

 

Infringement
[86]      Mr Mackenzie indicated that there were four main grounds upon which infringement of the pursuer’s registered Trade Marks was asserted:  (1) identical mark/ identical goods or services;  (2) identical mark/ similar goods or services;  (3) similar mark/ identical or similar goods or services;  and (4) taking unfair advantage of a famous Mark.  He dealt with them in turn.

 

(1)        Identical Mark/Identical Goods or Services
[87]      Section 10(1) of the 1994 Act and Article 9(2)(a) of the EU Trade Mark Regulation provide for infringement by the use of a sign which is identical with a registered Trade Mark in relation to goods or services which are identical with those for which the Trade Mark is registered.  To determine whether a sign and Mark are identical the court must compare the overall impression made by them, including their visual, aural and conceptual similarities:  Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV (Case C-342/97).  Where the sign and the Mark differ only in insignificant details which the average purchaser or customer would not notice, they may be deemed to be identical: LTJ Diffusion v Sadas Verbaudet [2003] ETMR 83.  Mr Mackenzie submitted that, for the reasons set out in relation to passing off, the sign and the Mark are identical.  The goods and services offered by Alba are covered by Classes 35 and 41 of the pursuer’s EU Trade Mark.  Infringement was therefore established.

 

(2)        Identical Mark/Similar Goods or Services
[88]      Section 10(2)(a) of the 1994 Act and Article 9(2)(a) of the EUTMR provide for infringement by the use of a sign which is identical with a registered Trade Mark in relation to goods or services which are similar to those for which the Trade Mark is registered, but only where, as a result there exists a likelihood of confusion on the part of the public, including the likelihood of association with the Trade Mark.  Mr Mackenzie submitted that a likelihood of confusion could be inferred from the surrounding circumstances.  The court could form its own view on the evidence before it:  Montblanc Simplo GmbH v Sepia Products Inc (1999 WL 1319059, TLR 2 February 2000).  The more similar the goods or services concerned, and the more distinctive the earlier Mark, the greater was the likelihood of confusion:  Lloyd Schuhfabrik Meyer (supra).  Confusion includes a likelihood of association, ie that the relevant public would think that the goods have the same origin or associated origin, but mere association on its own would not satisfy the requirements for a likelihood of confusion:  Marca Mode CV v Adidas AG (Case C- 425/98).  Since in this case the goods were identical, the court would have to consider whether the differences between the sign and the Mark are sufficient to prevent confusion.  Mr Mackenzie submitted that they were not ‑ indeed in the circumstances the likelihood of confusion was high.  The goods and services were offered to the same market, namely Scotland football supporters.  All the goods and services offered by Alba fell within the classification of goods and services registered by the pursuer and Classes 35 and 41 of the EU Trade Mark.

 

(3)        Similar Mark/Identical or Similar Goods or Services
[89]      Section 10(2)(b) provided for infringement where the Mark and the goods and services were both similar, rather than identical, and as a result there was a risk of confusion (including a likelihood of association).  The question of similarity of goods or services was considered in British Sugar v James Robertson [1996] RPC 281.  Relevant factors were the uses of the respective goods and services, the prospective users of those goods or services, the physical nature of the goods or acts of service, the respective trade channels through which they reached the market, the location where they were or were likely to be found (including whether on the same or different shelves in supermarkets) and the extent to which the respective goods or services competed with each other.  Mr Mackenzie submitted that in the present case the market in which the respective goods and services compete is narrow, namely Scottish football supporters, the size of which as a group will grow or shrink according to the success or otherwise of the national team.  The goods are all indications of support and are likely to be sold in the same place.  In this context it is important to note that the group of Scottish football supporters at whom the products and services are aimed will be expected to want to build up a suite of products to demonstrate support for and loyalty to the Scottish team.  The goods are complementary.  The same consumers in the same market are likely to choose from among the products and services marketed by the pursuer and by Alba.  It was unlikely that a customer would choose the whole range of such products and services.  The goods and services were therefore not only complementary but in competition with each other.  He referred to Flaco (Case T-74/10) at paragraph 40 and Monster Energy Company v OHIM (Case T-736/14) at paragraph 22.

 

(4)        Taking Unfair Advantage of a Famous Mark
[90]      In terms of section 10(3) of the 1994 Act it is an infringement of a registered Trade Mark to use, in the course of trade, a sign which is identical with or similar to the Trade Mark in relation to goods or services which are not similar to those for which the Trade Mark is registered, but only where the Trade Mark has a reputation in the UK and the use of the sign, being without due cause, takes unfair advantage of or is detrimental to the distinctive character or the repute of the Trade Mark.

[91]      The likelihood of confusion is not a necessary element of infringement under this head:  Premier Brands UK Ltd v Typhoon Europe Ltd [2000] FSR 767.  There must, however, be elements of visual, aural or conceptual similarity, but it is sufficient that the relevant section of the public establishes a link between the sign and the Mark as a result of the similarity between the two (without necessarily confusing them):  Adidas-Salomon AG v Fitnessworld Trading Ltd (Case C-408/01).  In L’Oreal SA v Bellure NV (Case C-487/07) the Court of Justice confirmed that to prove infringement the relevant section of the public had to establish a link between the allegedly infringing sign and the earlier Mark.  But while a likelihood of confusion was not required, in order to demonstrate infringement the pursuer would have to show one at least of three types of “injury”, viz detriment to the distinctive character of the Mark (“dilution”), detriment to the repute of the Mark (“tarnishment”), or taking unfair advantage of the distinctive character or repute of the Mark (“free‑riding” on the coat tails of the well‑known Mark).  An assessment had to be carried out taking into account all factors relevant to the circumstances of the case.

[92]      As to “reputation”, in order to have a reputation for the purposes of infringement under this head a Mark had to be known to a significant part of the public concerned with the products or services covered by the Mark.  The relevant public depended on the products or services being marketed:  General Motors Corp v Yplon SA (Case C-375/97).  Mr Mackenzie referred also to Oasis Stores Ltd’s Trade Mark Application [1998] RPC 631, Sheimer (M) Sdn Bhd’s Application [2000] RPC 484 and Maier v ASOS Plc [2015] FSR 20.  That last case made it clear that in assessing reputation the court must take into account not only the actual use made of the pursuer’s Mark but also all normal and fair notional use of the Mark in respect of the goods or services for which it was registered.

[93]      On the evidence in the present case, including the evidence of witnesses called by Alba, the “Tartan Army” Mark had a strong distinctive character.  Although it refers primarily to the “foot soldiers” supporting the Scottish football team, it is now well‑known to those supporters to be a reference to a brand name offering clothing, events and products and services bearing the Mark.  Mr Mackenzie submitted that this was a clear case of “free‑riding”.

 

Personal Bar
[94]      Finally, Mr Mackenzie referred to the question of personal bar.  There was no case set up in the pleadings for this but in any event a personal bar argument was bound to fail.  It was clear that Alba was aware from the very start (through Mr Emerson) that the pursuer objected to the continued use of the Mark by Mr Emerson and, therefore, by Alba.  Alba had never been led to believe otherwise.

[95]      In any event, it is well established that an owner of an intellectual property right, such as a Trade Mark, is entitled to withdraw any consent it has previously given to the use of the Mark.  In circumstances where there is no other justification for the third party to continue using the Mark, then it will be prohibited:  Martin Y Paz Diffusion SA v David Depuydt (Case C‑661/11).

 

Conclusion
[96]      On this Trade Mark aspect of the case, therefore, Mr Mackenzie invited me to sustain the pursuer’s second and fourth pleas in law in the principal action and grant decree in terms of Conclusions 1.1 (interdict) and 2 (destruction of infringing material in terms of section 15 of the Trade Marks Act 1994).  So far as concerned the Counterclaim, he invited me to sustain the pursuer’s first and second pleas in law and grant decree of absolvitor.

 

Defender’s Submissions
[97]      For the defender, Mr Young summarised his case in relation to Trade Marks under six broad heads as follows:  (i) invalidity;  (ii) revocation for non‑use;  (iii) earlier right (in relation to the EU Trade Mark only);  (iv) no infringement;  (v) personal bar;  and (vi) no EU Trade Mark over certain categories of goods and services.  He then made brief submissions about the pursuer’s claim in passing off.

 

(i)         Invalidity
[98]      Mr Young submitted that the pursuer’s Trade Marks (both UK and EU) did not perform and had never performed the fundamental function of a Trade Mark, namely acting as a guarantor of origin.  They lacked any distinctiveness, inherent or acquired (though it was agreed that acquired distinctiveness was not in issue in this case).  The Mark simply described a characteristic of any goods or services to which it was applied, namely that of relating to fans of the Scottish football team.  The Marks should be declared to be invalid.

[99]      Developing this point in more detail, he submitted that a Trade Mark might be declared invalid if it was registered in breach of any of the “absolute grounds of refusal” contained in section 3 of the 1994 Act or in Article 7 EUTMR:  see section 47(1) of the 1994 Act and Article 52 EUTMR.  There were four grounds relevant to the present case. 

(1)        The first absolute ground:  the Trade Mark did not conform to the basic requirements of a Trade Mark, namely the requirement that it be “capable of being represented graphically” and “capable of distinguishing” the goods or services of one undertaking from those of other undertakings:  section 1(1) and 3(1)(a) of the 1994 Act and Articles 4 and 7(1)(a) EUTMR.

(2)        The second absolute ground:  the Trade Mark was “devoid of any distinctive character”:  section 3(1)(b) of the 1994 Act and Article 7(1)(b) EUTMR.

(3)        The third absolute ground:  the Trade Mark consisted exclusively of signs or indications which might serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin of the goods or services, or the time when the goods were produced or the services rendered, or any other characteristics of the goods or services:  section 3(1)(c) of the 1994 Act and Article 7(1)(c) EUTMR.

(4)        The fourth absolute ground:  the Trade Mark consisted exclusively of signs or indications which had become customary in the current language or in the bona fide and established practices of the trade:  section 3(1)(d) of the 1994 Act and Article 7(1)(d) EUTMR.

[99]      Mr Young made three general points about these four absolute grounds of invalidity.  First, they were to be judged as at the date of application for the Trade Mark (“inherent distinctiveness”):  see Kerly’s Law of Trade Marks, 15th Edition (2011) at paragraph 8-069 and cf BACH and BACH Flower Remedies Trade Marks [2000] RPC 513.  Secondly, if there was no inherent distinctiveness, the owner of a Trade Mark could offer to prove that it had acquired distinctiveness by virtue of its use (but this was not relevant here since the pursuer expressly disclaimed any reliance on acquired distinctiveness).  Third, the onus was on the person challenging the validity of the Trade Mark to establish that there was no inherent distinctiveness.

[100]    The first absolute ground was concerned with the ability of the Trade Mark to distinguish any type of goods or services in the abstract without regard to any use to which it might be put or to any goods to which it might be applied:  Phillips Electronics NV v Remington Consumer Products Limited (No.1) [1999] RPC 809 at 817; Re Registered Trade Mark “Jeryl Lynn” [1999] FSR 491; Koninklijke KPN Nederland NV v Benelux-Merkenbureau (“Postkantoor”) [2004] ETMR 57.  This first absolute ground was likely to have a relatively narrow compass in relation to word signs and cover the same sort of ground as the third and fourth absolute grounds, especially when the words have a widespread generic or descriptive meaning.  If a Trade Mark satisfies the second absolute ground then there is almost inevitably an underlying capacity to distinguish, while if it does not satisfy the second absolute ground the question is irrelevant:  Proctor & Gamble Co v OHIM [2002] RPC 16, Phillips Electronics NV v Remington Consumer Products Limited [2003] RPC 2 at paragraph 40.

[101]    Mr Young referred to a number of authorities on the second absolute ground, viz Windsurfing Chiemsee Produktions-und Vertriebs GmbH v Boots-und Segelzubehor (Cases 108/97 and 109/97), Walter Huber [1999] ETMR 585, BORCO-Marken-Import Matthiesen GmbH & Co KG v OHIM [2011] ETMR 4, OHIM v Erpo Möbelwerk GmbH [2005] ETMR 58 and NMSI Trading Ltd’s Trade Mark Application [2012] RPC 7, to support the following general propositions.  First, for a Trade Mark to possess distinctive character, it must serve to identify the goods or services for which the Trade Mark is registered as originating from a particular undertaking and thus to distinguish the goods or services from those of other undertakings.  The term “distinctive” does not refer to how well‑known, how different or how unusual the Trade Mark is; it refers solely to whether it distinguishes the goods or services of one undertaking from those of another.  Second, distinctive character was to be assessed under reference to the specific goods or services for which registration was applied for or obtained.  Third, the question was one of fact, judged from the standpoint of the average consumer of the particular goods or services who was deemed to be reasonably well‑informed, observant and circumspect.  In determining this question of fact, the court could take account of the market share held by the Mark, how intensive, geographically widespread and long‑standing use of the Mark had been, the amount invested by the undertaking promoting the Mark, the proportion of the relevant class of persons who, because of the Mark, identify goods as originating from a particular undertaking, and statements from Chambers of Commerce and Industry or other trade and professional associations.  Fourth, although the general approach should be the same for all Trade Marks, it might be more difficult for certain types of categories of Marks, such as shapes or slogans, to be distinctive because of how they are perceived by the relevant public.  The decided cases were replete with unsuccessful attempts to register well‑known phrases, famous names, images, slogans, badges and descriptions:  see, for example, Executrices of the Estate of Diana, Princess of Wales’ Application [2001] ETMR 25, ELVIS PRESLEY Trade Mark case [1997] RPC 543, Score Draw Ltd v Finch [2007] Bus LR 864, Rugby Football Union and Nike European Operations Netherlands BV v Cotton Traders Ltd [2002] ETMR 76, Simply Trade Mark 2015 WL 4744901, Patak’s (Spices) Ltd [2007] ETMR 3, Canary Wharf Group Plc v The Comptroller-General of Patents, Designs and Trade Marks [2015] EWHC 1588 (Ch).  The common thread was that the person holding or applying for the Trade Mark was attempting to commandeer and monopolise well‑known words or phrases which they did not invent and which had a very well‑known and widespread meaning which was not distinctive of trade origin.  That was consistent with the fundamental public or general interest that underlay the requirement of distinctiveness, namely that traders should not be allowed to enclose parts of the general English language for their own private exploitation (the so‑called “freedom to use” principle):  see Kerly at paragraphs 8-64, Canary Wharf at paragraphs 31-34.  This was to be contrasted with situations where, although a term may be very well‑known and may denote things other than simply trade origin (such as allegiance to a football team), it is still linked to a single economic undertaking that uses a sign in a Trade Mark manner to denote origin of the goods:  see Arsenal Football Club Plc (supra).  A Trade Mark may operate both to denote origin of goods and as a badge of allegiance, but in order to be valid it must undoubtedly do the former:  Score Draw (supra) at paragraph 22.

[102]    The third and fourth absolute grounds were, in reality just specific instances of lack of distinctive character but they helped to explain and clarify that general concept.  The third was concerned with Trade Marks that merely described a characteristic or quality of goods or services as opposed to denoting trade origin.  It served the important public interest in ensuring that descriptive terms remain free for all to use:  OHIM v WM Wrigley JR Company (“ Doublemint”) [2004] ETMR 9 at paragraph 31.  To engage this ground all that is necessary is that at least one of the possible meanings of the Trade Mark designates a characteristic of the goods or services concerned and it is irrelevant whether that descriptive nature of the Trade Mark is essential or merely ancillary:  Koninklijke KPN Nederland NV v Benelux-Merkenbureau (“Postkantoor”) (supra) at paragraph 102, Linkin Park LLC’s Application [2006] ETMR 74 at paragraph 45 and NMSI Trading (supra) at paragraphs 16-18.  The fourth ground is concerned with Trade Marks that consist of generic or customary terms to refer to the particular goods and services, such as where particular goods or services are referred to generically by the name of the Trade Mark:  cf BACH and BACH (supra).

[103]    Mr Young submitted that the UK and EU Trade Marks for “Tartan Army” and “The Tartan Army” had never served to identify the goods or services for which they were registered as originating from a particular undertaking or source, and had never operated to guarantee origin.  He pointed to a number of factors including:  the accepted origin and meaning of the term “Tartan Army”;  the absence of evidence from anyone that prior to their registration in the UK (1997) and the EU (2006), the Mark when used on clothes and merchandise was inherently distinctive of origin; the existence, according to the evidence, of widespread, pervasive and non‑trade mark use of the term on all sorts of goods and services.  He also submitted that on the evidence the pursuer had applied for and obtained registration of the EU Trade Mark in bad faith, since at that time it knew of the magazine and knew that it did not have a Trade Mark relating to identical or similar goods, yet, nonetheless, they applied for the EU Trade Mark in a large number of Classes, including Classes 16 and 41, publication of a magazine online and in print.

 

(ii)        Revocation for non-use
[104]    A Trade Mark is liable to be revoked if, amongst other things, there has been a continuous period of five years in which it has not been put to “genuine use” and there are “no proper reasons for non‑use”:  section 46(1) of the 1994 Act, Articles 15(1) and 51 EUTMR.  Mr Young did not dispute the propositions relating to the meaning of “genuine use” taken by Mr Mackenzie from the judgment of Arnold J in Stichting BDO and others v BDO Unibank (see paragraph [83] above).  He emphasised that, for it to be genuine, the use must be more than merely token, ie not designed solely to preserve the rights conferred by the registration of the Mark.  He also sought to emphasise that “proper reasons for non‑use” was rarely, if ever established;  it referred to something independent of the will of the owner which hindered or prohibited him from using the Trade Mark, not simply commercial difficulties encountered by him (see Kerly at paragraphs 10-085 ‑ 10-089).  It was for the Trade Mark owner to prove sufficient use of the Trade Mark.  The question of partial revocation could cause problems.  The court should only revoke the Trade Mark to the extent that it has not been genuinely used:  Article 51(2) EUTMR.  Where an EU Trade Mark has been registered in a broad category of goods and services but use is established only in a smaller sub‑category of those goods and services, the court may have to define a “fair specification”.  In particular it may have to make findings in light of submissions as to the scope of any such fair specification:  Stichting at paragraphs 53-56 and 62.

[105]    Mr Young submitted that the relevant five year period was the period of five years prior to the date the counterclaim was introduced into this action on 16 February 2015, ie from 16 February 2010 to 16 February 2015.  He submitted on the evidence that the pursuer had not put either the UK or EU Trade Marks to genuine use in that period. 

 

(iii)       Earlier Right (in Relation to the EU Trade Mark only)

[106]    The EUTMR gives protection to “early rights”: see Articles 111 and 54(3).  The concept includes circumstances where the person holding the earlier right could have prevented the use of the Mark in relation to certain goods and services by virtue of an action of passing off:  see Last Minute Network Limited v OHIM [2010] ETMR 35.  Although there was no clear guidance as to the date at which the issue was to be determined, logically it should be at the date of the application to register or earlier.

[107]    The application to register the EU Trade Mark occurred in March 2006 (the filing date) or possibly earlier than that.

 

(iv)       No Infringement
[108]    There was no dispute as to the circumstances in which infringement could be established:  (1) identical Mark/identical goods or services;  (2) identical Mark/similar goods or services;  (3) similar Mark/identical or similar goods or services;  and (4) taking unfair advantage of a famous Mark.

[109]    The question of whether a sign or Mark is identical is interpreted strictly.  There is only identity where the sign reproduces, without any modification or addition, all of the elements constituting the Trade Mark.  Insignificant differences may, exceptionally, be ignored if the overall impression to the average consumer is still one of identity, but the test is very narrow:  LTJ Diffusion v Sadas Verbaudet [2003] ETMR 83 at paragraphs 50-52, Reed Executive Plc v Reed Business Information [2004] ETMR 56 at paragraphs 24-33, IPC Media Limited v Median 10 Limited [2014] FSR 25.

[110]    As to the second and third grounds of infringement, the basic comparison was between, on the one hand, the allegedly infringing sign and the goods in relation to which it was being used and, on the other, a notional and fair use of the Trade Mark in relation to all goods and services covered by the registration.  The similarity or identity of goods and services was a threshold question, to be answered applying objective criteria through the perspective of the average consumer.  Those criteria included the intended purpose of the goods or services, their method of use, whether they are in competition or complementary, the trade channels through which they are acquired and whether they are likely to be found in the same places in shops and supermarkets:  Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc [1999] 1 CMLR 77 at paragraph 23, Kerly at paragraph 9-074.  The similarity of Marks should be tested as a matter of overall impression against the visual, aural and conceptual similarities between the sign and the Trade Mark, taking account both of the similarities and differences.  Merely because one element is identical does not mean that the Marks as a whole are similar unless the identical part constitutes the dominant element in the overall impression:  Sabel BV v Puma AG and Rudolph Dassler Sport [1998] 1 CML are 445 at paragraph 23, Calvin Klein Trade Mark Trust v Office for Harmonisation in the Internal Market [2011] ETMR 5 at paragraphs 45-46.

[111]    The use of a very distinctive Trade Mark on dissimilar goods and services was not covered under these grounds of infringement but might be covered under the fourth ground:  Kerly paragraphs 9-061 ‑ 9-071 and Intel Corp Inc v Sihra [2004] ETMR are 44 at paragraph 12.

[112]    Both the second and third rounds of infringement required proof of a likelihood of confusion.  The court was required to make a global assessment taking into account the interdependence between the two factors of similarity or identity of goods and services and similarity or identity of the Marks.  The extent of any distinctiveness of the Trade Mark was a very important factor ‑ the less distinctive the Trade Mark the less likelihood there was of any confusion:  Sabel (supra), Kerly at paragraph 9-091.

[113]    The fourth ground of infringement, viz taking unfair advantage of a famous Mark, gave rise to a number of points.  First, the Trade Mark must have a reputation in a substantial part of the UK or the EU (depending upon which Trade Mark is under consideration) and must be known by a significant part of the relevant public.  That assessment should take account of the market share held by the Trade Mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.  While (for an EU Trade Mark) it may be possible that a reputation in only one member state would suffice (Pago International GmbH v Tirolmilch Registrierte Genossenschaft mbH [2010] ETMR 5 at paragraphs 21‑30) one would normally expect the reputation to extend beyond a single member state unless there was something about the relevant goods or services that justified restriction to that one member state:  cf Leno Merken (supra).  Second, the sign must be similar or identical to the Trade Mark;  and, although the test was not as high as requiring a likelihood of confusion, the sign must give rise to a link with the Trade Mark in the mind of the relevant public.  Third, there must be either an unfair advantage taken of the distinctive character or repute of the Trade Mark (riding on the coat tails of the Trade Mark and benefiting from its power of attraction) or detriment to the distinctive character or repute of the Trade Mark (by dilution or whittling down its distinctiveness) leading to an actual or likely change in economic behaviour of the average consumer of goods or services:  Intel Corp (supra) at paragraph 29, Bayerische Motoren Werke AG v Technosport London Limited/George Agyeton [2016] ETMR 31 at paragraph 34 and Whirlpool Corp v Kenwood Limited [2010] ETMR 7 at paragraphs 89-107.  Fourth, the sign must be used without due cause.  This involves balancing the interests of the Trade Mark holder in safeguarding the essential function of his Trade Mark with the interests of a user of the sign in having a sign capable of denoting his products and services:  Comic Enterprises Ltd v Twentieth Century Fox Film Corporation [2016] EWCA Civ 455 at paragraphs 120-124, Beheer BV, Hendrikus De Vries v Red Bull GmbH, Red Bull Nederland BV [2014] ETMR] 24 at paragraph 60.

[114]    Applying all that to the facts of the case, Mr Young submitted that no infringement had been established.  First, the defender was not using the sign without the consent of the Trade Mark holder (at least so far as the UK Trade Marks were concerned).  The pursuer’s predecessor (Mr Adie) consented to the use of the sign for the purpose of the magazine and the pursuer itself continued to consent after it acquired ownership of the UK Trade Marks.  Secondly, the defender’s sign is not identical to the pursuer’s Trade Marks since it modifies and adds to it by including the words “Famous” and “Magazine”.  The word “Famous” gives a clear indication that the term is being used in its popular and widespread meaning of fans of the Scottish football team.  Thirdly, the UK Trade Marks are registered in respect of goods and services which are, self‑evidently, not identical to (and are very different from) the goods or services for which the sign is being used by the defender (principally, publication of a magazine online and in print).  Fourthly, there is no similarity between the registered Trade Marks and the sign used by the defender.  The use of the word “Famous” makes it clear that the words “Tartan Army” are being used in their descriptive sense, referring to fans of the Scotland football team, rather than suggesting any connection or trade origin, while the use of those words in conjunction with “Magazine” made it clear that the sign was intended to be descriptive of the general subject matter of the goods and services rather than suggesting any trade origin:  cf The European Ltd v The Economist Newspaper Ltd [1998] ETMR 307.  The general descriptive quality of the word “European”, as with the descriptive term “Tartan Army” here, meant that small differences could be and were sufficient to render the two Marks dissimilar.  Fifthly, in so far as the Marks were similar, the goods and services in respect of which the UK Trade Marks were registered were not similar at all to the goods and services for which the defender’s sign is used.  They were not in competition.  Sixthly, there was no likelihood of confusion.  Seventhly, the fourth ground of infringement did not even get off the ground, in broad terms because the pursuer’s Trade Mark did not have a reputation and therefore there had been no riding on the coat tails of any such reputation.  The defender was, in any event, not using the sign without due cause since it had done so for many years with the permission of Mr Adie and the pursuer; and the use of the sign long predated the existence of the EU Trade Mark.

 

(v)        Personal Bar (including Consent, Waiver and Acquiescence)
[115]    Mr Young sought to take three general principles from the case of William Grant v Glen Catrine Bonded Warehouse 2001 SC 901, which he described as the leading case in Scots law concerned with personal bar and acquiescence in this area.  First, the basic principles of personal bar and acquiescence are the same as in other areas of law, and involve person A expressly or impliedly indicating that he consents to a particular course of action by person B, thereby inducing person B to act in reliance on that consent to his prejudice (per Lord President Rodger at paragraphs 29 and 38).  Second, it is not sufficient for person B simply to have acted to his prejudice ‑ he must have done so because he believed person A to be consenting to the act (per Lord President Rodger at paragraph 46).  Third, such personal bar or acquiescence can, in principle, operate to bar future and continuing wrongs, but such cases are likely to be rare and require an analysis of the whole facts and circumstances to see whether the consent that was given was intended to be an irrevocable consent for the future or merely a tolerance of a past breach (per Lord President Rodger at paragraphs 47-48, per Lord Clarke at paragraph 8, but c.f. per Lord Nimmo Smith at paragraph 5).  Although there was no discussion in William Grant of the principle of waiver, waiver is of the same genus as personal bar and similar principles are likely to apply to both:  McMullen Group Holdings Ltd v John Harwood [2011] CSOH 132 at paragraphs 69-73.  English cases of estoppel being used to prevent actions of Trade Mark infringement and passing off (cf Habib Bank Ltd v Habib Bank AG [1981] 1 WLR 1265) were likely to be relevant and arrive at a similar result:  William Grant per Lord President Rodger at paragraph 51.

[116]    Mr Young submitted that the defender’s case on personal bar and acquiescence was unanswerable.  If this case did not give rise to personal bar, it was difficult to see that personal bar could ever operate.  The pursuer’s predecessor in title (Mr Adie/ SMML) expressly consented to the publication of a magazine with the name The Famous Tartan Army Magazine.  He could not have made that position any clearer.  His email was clearly not simply an agreement to overlook a one off past breach; the only way to give it any content was to treat it as an irrevocable consent to the use of the name in publication of the magazine.  On the evidence both Mr Adie and the individuals behind the pursuer had actively assisted in the production of the magazine, providing material and press releases for it.

 

(vi)       No Current EU Trade Mark over certain Categories of Goods and Services
[117]    Mr Young concluded his submissions relating to Trade Mark by raising two points which, he submitted, went to title to sue or, alternatively, to the relevancy of the pursuer’s claims in this action.

[118]    The first point was that the EU Trade Mark was not in existence as at the date this action was commenced.  It was registered in May 2009 and an EU Trade Mark confers rights only from the date of its registration:  EUTMR Article 9(1).  In so far as the pursuer founded upon that Trade Mark, it had no right to sue when this action was commenced in February 2009.  However, Mr Young very fairly recognised that the action against Alba only commenced when Alba was joined as fourth defender in February 2015.  That is the relevant date so far as concerns Alba.  It follows that this point fails.

[119]    The second point is more fundamental.  It also related to the details of the EU Trade Mark.  The EU Trade Mark as originally filed on 30 March 2006 covered Classes 16, 24, 25, 27, 28, 32, 33, 35, 39, 41 and 43.  Class 33 (alcoholic beverages) was deleted by the pursuer in March 2009, just before the Trade Mark was registered.  On the tenth anniversary of the original filing date, Classes 24, 25, 32, 35 and 41 were renewed, albeit with effect from 3 April 2016.  Classes 16, 27, 28, 39 and 43, however, were cancelled with effect from 31 March 2016.  These classes cover printed matter, including magazines (Class 16) and travel agency services (Class 39).  The UK Trade Marks do not cover such categories.  On 13 May 2016 the pursuer sought to remedy that position by making a new application for an EU Trade Mark in Classes 16, 39 and 43.  That application has been given a provisional filing date of 13 May 2016.  But the Trade Mark in those classes has not been registered.  The application to the EUIPO has not yet reached the stage of opposition proceedings.  Accordingly, Mr Young submits that, whatever may have been the position before April 2016, the pursuer has no current right, in terms of Trade Mark infringement, to prohibit the use of the name “Tartan Army” in relation to goods or services within those categories, specifically printed matter and magazines and travel agency services.

 

Passing Off
[120]    Mr Young submitted that there was no real dispute about the applicable legal principles.  The question was a simple one: was the defender passing his goods off as the goods of the pursuer?  The pursuer had to prove the “classical trinity”:  (1) a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying “get-up” under which his particular goods or services are offered to the public and which is recognised by the public as distinctive specifically of his goods or services;  (2) misrepresentation by the defender to the public, intentionally or otherwise, leading the public to believe that the goods or services offered by him are the goods or services of the pursuer;  and (3) the likelihood of the pursuer suffering damage as a result of that erroneous belief.  The law was usefully summarised in Phones 4u Ltd v Phone4u.co.uk Internet Ltd [2007] RPC 5 at paragraphs 9-27.

[121]    Although there were many overlaps in the evidence relating to a passing off case and a case of Trade Mark infringement, a number of differences should be emphasised.  First, there was no room for the concept of “notional use” in an action of passing off, as there is in Trade Mark infringement.  Passing off only applies where the pursuer has generated the necessary goodwill, either through trading or through advertising in advance of trading ‑ if there has been no actual trading, simply preparing for trading will be insufficient:  Wadlow, The Law of Passing-Off, 4th Edition, 2011, at paragraphs 3-074 ‑ 3 075, Teleworks Ltd v Telework Group Plc [2002] RPC 7 at paragraphs 4-5.  Secondly, in an action of passing off, the pursuer must show that his Mark, get‑up or other identification of origin has become distinctive of his goods alone or, at least, of a defined class of goods or business to which his goods belong.  Where others are independently using the Mark or get-up there will be real difficulties for a pursuer in showing that that used by the defender is calculated to injure his goodwill.  If the sign, Mark or get‑up suggests a connection with a place or a person or entity other than the pursuer, it will not be distinctive:  Kerly, paragraph 18-061, cf Barnsley Brewery v RBNB [1997] FSR 462 at page 8.  Third, it is not enough for the pursuer to show confusion between his goods and those of the defender.  There must be deception in the sense that a substantial number of people would assume that there was a trade connection between them.  There must be a very real risk of a diversion of trade or damage to goodwill:  Phones 4u Ltd at paragraphs 16-21.  Fourth, whilst there is no requirement that a pursuer and defender should be operating in the same field of commercial activity, if they are not operating in the same field there is a “heavy burden” on the pursuer to prove that the use of the Mark or get-up will induce others to think that the defender’s business is an extension of or connected with or approved by him:  Kerly at paragraph 18-017.  Fifth, if a trader adopts words in common use for its trade name, then he must accept the risk of confusion.  The courts will accept comparatively small differences as being sufficient to avoid confusion ‑ otherwise the first user would be allowed, in effect, to monopolise words or phrases:  Phones 4u Ltd at paragraph 23.

[122]    Mr Young submitted that the pursuer’s case of passing off here was bound to fail.  First, the pursuer had not established any goodwill in the name Tartan Army.  Second, the pursuer and defender do not operate, and have never operated, in the same field of commercial activity ‑ so there was a heavy onus on the pursuer to show that a substantial number of the public would assume a connection between the defender and the pursuer simply from the use by the defender of the name “The Famous Tartan Army Magazine”.  Third, there was no evidence of any real risk of diversion of trade or damage to goodwill.  Fourth, the pursuer had chosen a name in widespread use, as describing the fans of the Scottish football team, and had to accept the risk that small differences in the name attached to other goods or services would be sufficient to differentiate between the two.  Fifth, the pursuer had failed to prove that members of the public would recognise the sign or Mark “Tartan Army” as denoting a particular trade source.

 

Conclusion
[123]    Mr Young invited me to sustain the fourth defender’s second, third, fourth, fifth and sixth pleas in law in the principal action and to grant decree of absolvitor.  The pursuer had failed to make out any entitlement to interdict and the other relief claimed by it in the principal action and the defender was entitled to decree of absolvitor in respect of the Conclusions in that action.  So far as concerned the Counterclaim, he invited me to sustain the fourth defender’s first, second, third and fourth pleas in law and grant decree in terms of the first and second Conclusions (declarator of invalidity in respect of the UK and EU Trade Marks), which failing to grant decree in terms of the third and fourth Conclusions therein (declarator in respect of certain Classes within the EU Trade Mark and/or revocation in respect of certain Classes therein).

 

Discussion
[124]    Although both parties’ submissions were detailed and complex, there was not in the end any significant dispute between them on the law to be applied.  Much of the case law cited in the written submissions was, as I understood it, placed before the court not so much to help resolve disputed interpretations of the applicable legal principles but rather to provide illustrations of how the particular statutory provisions, in the case of the Trade Mark dispute, and the common law, in the case of passing off, had been applied.  This was helpful.  I have taken that case law into account in reaching my decision.  But having set it out at some length in the context of parties’ submissions, I do not propose to repeat the citations at length in this part of my Opinion.

[125]    It is convenient to start by considering the Trade Mark dispute before turning to consider the alternative case in passing off.

 

The Current Content of the EU Trade Mark
[126]    I start by considering Mr Young’s submission as to the present scope or content of the pursuer’s EU Trade Mark.  An EU Trade Mark is registered for a period of ten years from the date of filing of the application:  Article 46 EUTMR.  It may be renewed under Article 47 EUTMR at the request of the owner of the Mark.  I heard no oral evidence on the question of renewal, nor was this the subject of any witness statement, but from the documents lodged in process (which are to be treated as evidence) it is apparent that an application for renewal was made on 29 March 2016, within the period of six months prior to the expiry of the registration as laid down in the first part of Article 47(3) EUTMR.  I do not have a copy of that application, but it is a legitimate inference from the way in which it was dealt with by the EUIPO that the application sought renewal of the EU Trade Mark only in Classes 24, 25, 32, 35 and 41.  Notification from the EUIPO to Murgitroyd & Company, the pursuer’s representative, dated 5 April 2016 records the renewal of the EU Trade Mark having been entered on the register on 3 April 2016 for goods and services in Classes 24, 25, 32, 35 and 41.  The renewal is valid for a further period of ten years from the expiry of the existing registration.  The notification goes on to say that the EUIPO have cancelled from the register, with effect from 31 March 2016, the goods and services falling within Classes 16, 27, 28, 39 and 43.  Although in terms of the second part of Article 47(3) EUTMR a request for renewal may be submitted within a period of six months following expiry of the registration (on payment of the appropriate fee), that does not appear to have been done.  Instead, an application appears to have been made for a new EU Trade Mark in these Classes.  On 13 May 2016 EUIPO wrote to Murgitroyd & Company acknowledging receipt of an application for an EU Trade Mark in respect of Classes 16, 39 and 43, with a provisional filing date of 13 May 2016.  It may be legitimate to speculate that the reason for proceeding in this fashion, rather than including these Classes in the renewal application, may have been that the description of the particular goods and services claimed in respect of each of these Classes in the new application goes further than and expands upon what had been claimed in the original EU Trade Mark.  The renewal process cannot be used to increase the range of goods and services covered by the Trade Mark.

[127]    In those circumstances Mr Young is correct to say that the pursuer has no current registered EU Trade Mark in respect of those Classes.  The importance of registration, of course, is that it is only upon registration that the rights are conferred by the Trade Mark:  see Article 9 and Article 9b EUTMR.  The filing date is relevant only as regards priorities.  Accordingly, the pursuer has presently no EU Trade Mark in respect of the goods and services covered by these classes, and its UK Trade Marks do not cover these classes either.  This is particularly important given that the pursuer’s main complaint in this action concerns the publication of the magazine and the organisation of supporters’ trips to Scotland matches abroad.  Had the pursuer continued to insist on the conclusion for count, reckoning and payment, it would have been necessary to consider the question of validity, revocation and infringement in respect of these Classes, but the pursuer expressly restricts its claim now to a claim for interdict and for destruction of infringing material.  That looks to the current position rather than the position as it was before expiry and (limited) renewal of the EU Trade Mark.

[128]    That does not, of course, mean that the activities of the defender in terms of publication of the Magazine and the organisation of supporters’ trips abroad are irrelevant.  But it does mean that the grounds upon which the pursuer can present a case of infringement in respect of these activities is more limited.

[129]    None of this, of course, affects the claim in passing off.

 

The Licence Point – Personal Bar, Consent, etc
[130]    The facts relating to the licence point are in short compass.  They were spoken to by Mr Adie and Mr Emerson and were not significantly in dispute.  Mr Emerson approached Mr Adie in 2005 indicating that he wanted to use the “Tartan Army” Trade Mark in connection with a magazine they were thinking of launching.  Mr Adie was happy to go along with this, both because he saw Mr Emerson (and his colleague, Mr Tannock) as “nice guys”, enthusiastic amateurs who were having fun launching a football fanzine, and because he thought that the magazine would be a natural fit for the “Tartan Army” brand, providing marketing opportunities for his products and services.  No formal licence was prepared, but on 2 September 2005 Mr Adie sent an email to Mr Emerson headed “Use of Trade marks etc.” stating that:

 

“For the avoidance of doubt, I have no issue with you producing a magazine entitled The Famous Tartan Army.”

 

He added that it was his intention to work with Mr Emerson in the future and allow use of the Trade Marks held by him and his companies.

[131]    Mr Emerson and Mr Tannock established SFM in January 2005.  That company was to produce the Magazine.  It is not disputed that in Mr Adie’s email stating that he had no issue with “you” producing a magazine entitled The Famous Tartan Army Magazine, the word “you” was a reference both to Mr Emerson and Mr Tannock personally and to their company, SFM.  Equally, when Mr Adie said that “he” had no issue with them producing the Magazine, he was speaking on behalf of himself and the company SMML which owned the Trade Marks.

[132]    It should be noted that according to Mr Emerson’s evidence he and Mr Tannock, or SFM, had already produced a mock copy of the Magazine in 2004/2005.  Whatever expenditure was involved in that process was, therefore, spent without any reassurance by Mr Adie or anyone else that no objection would be taken to them using the Tartan Army name.  In light of that it is difficult to accept at face value Mr Emerson’s statement in his written evidence, on which he was cross-examined by Mr Mackenzie, that he totally relied on that email from Mr Adie, otherwise he would not have gone ahead with the commencement of the Magazine under that name.  The truth is that he was already embarked on the Magazine project by the time he obtained the email from Mr Adie.  No doubt receipt of the email provided some comfort and reassurance, but I have no reason to believe that Mr Emerson would not have gone ahead anyway.

[132]    Between September 2005 and July 2008 SFM brought out five issues of the Magazine.  They also organised the trip to Paris which included two nights’ accommodation.

[133]    The Trade Marks were assigned to the pursuer in 2006 and shortly thereafter the whole share capital in the pursuer was purchased by Mr Shields and Mr Lawson.  Mr Emerson and Mr Tannock approached them and they had no difficulty with the permission given by Mr Adie continuing.  However, it is clear from the evidence that soon after this there was a falling out between the pursuer on the one hand and Mr Emerson/SFM on the other.  It appears to have begun when Mr Shields and Mr Lawson discovered that Mr Emerson/SFM were making money out of arranging excursions by train, bus and boat to take Scotland football fans to a qualifying matches in Paris and Amsterdam in 2007/2008.  So far as the pursuer was concerned, Mr Emerson/SFM were using or taking advantage of the Tartan Army brand to promote these excursions.  However, the reasons, and the rights and wrongs, do not matter for present purposes.  What does matter is that on 31 July 2008 Mr Shields and Mr Lawson emailed Mr Emerson stating that, following a meeting that morning:

 

“… it has been decided to withdraw any previous permissions you had to use a registered trade mark ‘Tartan Army’ in connection with ‘The Famous Tartan Army Magazine’.”

 

That decision, they added, took immediate effect.  It was confirmed in writing by letters from their solicitors.

[134]    In July 2008 SFM ceased trading.  The letter withdrawing permission to use the “Tartan Army” Trade Mark was, therefore, sent after SFM ceased trading.  SFM was put into liquidation on 28 August 2008.  It was dissolved in June 2009.

[135]    At the time permission to use the EU Trade Mark was withdrawn by email on 31 July 2008, Alba, the fourth defender, was not yet in existence.  It was incorporated on 4 November 2008.

[136]    On 18 November 2008 the liquidator of SFM, acting on behalf of SFM, assigned all of SFM’s intellectual property rights to SETT, the original first defender in this action.  Those rights, as set out in Schedule 1 to the Assignation, included all customer and client lists, all databases, all website access codes and passwords, the domain name and the trading names Famous Tartan Army Magazine and Famoustartanarmy.co.uk.  It is worth noticing that there was no express assignation of the benefit of the licence or permission given by Mr Adie in his email of 2 September 2005.  It had, of course, by then been withdrawn, or purportedly so, in terms of the email from Mr Shields and Mr Lawson of 31 July 2008 and the letters that followed.

[137]    On 20 November 2008 SETT granted an assignation in favour of Alba of all its business goodwill and intellectual property rights.  The form of that assignation differs from that in terms of which rights were assigned to SETT, but nothing turns on that since SETT could not assign that which it did not have.

[138]    Mr Young disputes the licence analysis advanced by Mr Mackenzie.  He submits that the matter should be considered on the basis of personal bar.  Mr Adie made a clear representation, on behalf of SFM, the owner of the rights, that he had no issue with the production of the Magazine.  That amounted to a representation that Mr Adie did not consider the Magazine to be in breach of his intellectual property rights.  Mr Emerson went ahead with it on the basis of that representation and the pursuer, as the current owner of whatever right exists, cannot now be heard to complain about its publication.  Mr Young submits that these facts give rise to an “unanswerable” case of personal bar and acquiescence.  SMML expressly consented to the publication of a magazine with the name The Famous Tartan Army Magazine.  That was the paradigm of an irrevocable and unqualified consent, not simply waiving a one‑off past breach but making it clear that they could go ahead and produce the Magazine in the future.  Further, Mr Adie, and indeed Mr Shields and Mr Lawson, helped in the production and publication of the Magazine, placing advertisements and providing press releases and other material for it, and they did all this when they knew that they were applying for the EU Trade Mark.  He says that the fourth defender, Alba, has relied upon that to its prejudice.  It was only after obtaining Mr Adie’s consent that they started to produce the Magazine.  It was clear that there had been an investment of substantial time and a reasonable amount of money into building up valuable goodwill in the Magazine.  It would be grossly and manifestly unfair for the pursuer now to insist that the Magazine change its name.

[139]    I accept that Mr Adie’s email does not simply amount to a waiver of a past breach.  Past breaches are not mentioned.  It purports to give permission for ‑ or at least not to object to ‑ publication of the Magazine in the future.  Whether that permission was to be irrevocable is, however, an altogether different question.  The email is silent on the point.  As a matter of contract, if that is the right analysis, in the absence of any express provision or clear implication from the surrounding circumstances, one would expect such permission to be revocable on reasonable notice, the reasonableness of the notice taking account of practical matters such as the investment of time and money by Mr Emerson/ SFM in building up the publication and establishing goodwill in it and the time, expense and effort required to re-brand the Magazine by removing any offending words from the title.  If the matter is to be treated in terms of personal bar, while it is possible for this doctrine to prevent a party ever changing its position, the more usual analysis will be that it can only do so on reasonable notice.  The contractual analysis therefore merges with that of personal bar.  This is not altogether surprising.  I do not think it matters, therefore, whether the email is treated as a licence, the grant of permission or simply an indication that no objection was taken because of a view about the extent of the intellectual property rights owned by Mr Adie and/or SMML.  The difficulty in deciding what would constitute reasonable time or reasonable notice in this case is that, as already indicated, I do not accept Mr Emerson’s evidence that he only proceeded with the production and publication of the Magazine on the strength of Mr Adie’s promise in his email.  He had already begun the process before contacting Mr Adie.  His wife, Sian Emerson, did not know whether her husband had approached Mr Adie to ask for his permission ‑ she thought rather that he had approached him to inform him of SFM’s intentions to publish a magazine.  Nor do I have any hard evidence, whether in writing or oral form, about the amount of time, energy and expense invested by Mr Emerson and/or SFM in the project.  So far as concerns the contention that Mr Adie, Mr Shields and Mr Lawson helped in the production and publication of the Magazine at the same time as they were taking steps to register an EU Trade Mark in a number of Classes, including Class 16 (written material, including magazines), I do not accept that they were doing such things at that time or even at all.  The EU Trade Mark application was filed on 30 March 2006, before Mr Shields and Mr Lawson acquired the shares in the pursuer.  They were not helping with the Magazine at that time; and I accept Mr Adie’s evidence that he did not help with the Magazine in the manner alleged.  But even if they had been doing that, that has nothing to do with the defender’s case that steps were taken to produce and publish the Magazine on the strength of Mr Adie’s email granting a licence in September 2005, long before Mr Shields and Mr Lawson came on the scene.  In any event, the decision to revoke the permission came in light of the concern that Mr Emerson was going beyond the limited terms of the permission granted by Mr Adie, which was simply to produce the Magazine.

[140]    All this, however, seems to me to be beside the point.  There are four additional reasons for finding in favour of the pursuers on this point.

[141]    First, it is clear from the decision in Martin Y Paz Diffusion SA, referred to by Mr Mackenzie, that an owner of an intellectual property right such as a Trade Mark is entitled to withdraw any consent it has previously given to the use of the Mark:  see in particular paragraphs 58-62.  There may be extreme cases where a party making a representation or giving its consent cannot be allowed to go back on that.  Habib Bank may be an example.  The representation or permission there was clear cut, the acting on the basis of it was prolonged and there would have been severe prejudice to the representee if the consent was withdrawn.  But this is nowhere near that sort of case.

[142]    Second, even if the permission to publish the Magazine using the Tartan Army Mark in its title was irrevocable, that permission only extended to publication of the Magazine.  It cannot possibly be construed as extending to the other activities carried on by Mr Emerson and/or SFM under the auspices of the Magazine.

[143]    Third, assuming the permission to be revocable on notice, whatever period one takes as being a reasonable period, and whatever notice amounts to the giving of reasonable notice, the fact is that Mr Shields and Mr Lawson, on behalf of the pursuer, give notice of termination of any permission as long ago as July 2008.  This action commenced in 2009 but interim interdict was refused.  So the defenders have had all the time until now to benefit from that permission.  On any view that is a reasonable time.

[144]    Fourth, Alba itself only acquired the rights after they were terminated by the pursuer and in full knowledge that they had been terminated.  Personal bar is personal to the person or entity who has acted in reliance upon the representation.  This was emphasised, if emphasis were needed, by Lord President Rodger in William Grant v Glen Catrine Bonded Warehouse at paragraph [29].  It cannot be used to found a right capable of being passed on to another.  Any personal bar argument which might have been available to SFM was not available to SETT (through whom such rights as there were passed by assignation) and is not available to Alba.

[145]    I would also have held, but I do not think it was argued in this way, that there was another reason why the permission in this case was personal to Mr Emerson (on behalf of SFM) to whom it was given.  Mr Adie was clearly influenced by the personal qualities of Mr Emerson and Mr Tannock and what he perceived to be the amateurish (in the best sense of that word) nature of the enterprise.  The language in which the email was couched was personal: “I have no issue with you producing a magazine entitled The Famous Tartan Army” (emphasis added).  This was not conferring a right capable of being transferred to others.  The permission was given to SFM and was incapable of assignment to SETT.  It follows that they could not have been assigned by SETT to Alba.

[145]    For all these reasons I reject Mr Young’s submissions on the licence/personal bar issue.  In the circumstances of this case, the permission given by Mr Adie does not preclude the pursuer from insisting in its action against Alba for Trade Mark infringement.  For the avoidance of doubt, the same reasoning applies in the context of the arguments based on passing off.

 

Invalidity
[146]    Mr Young put forward a root and branch challenge to the validity of the UK and EU Trade Marks.  He relied upon all four of the “absolute grounds for refusal of registration” identified in section 3(1) of the Trade Marks Act 1994 and Article 7 EUTMR.  It was not suggested that there was any material difference between the UK and EU provisions in terms of wording, interpretation or approach.  Since he accepted that, in respect of this challenge to the validity of the Trade Marks, the onus lay on him to establish that the “Tartan Army” Mark did not have the “inherent distinctiveness” necessary to permit of its registration as a Trade Mark, I shall consider this part of the argument principally under reference to his submissions.

[146]    The absolute grounds for refusal of registration, as set out in section 3(1) of the 1994 Act and Article 7 EUTMR are:  (a) that the sign is incapable of distinguishing goods or services of one undertaking from those of other undertakings;  (b) that the Trade Mark is devoid of any distinctive character;  (c) that the Trade Mark consists exclusively of signs or indications serving to designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production of goods or of rendering services, or other characteristics of the goods or services;  and (d) that the Trade Mark consists exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade.  The Trade Marks have, of course, been registered, both in the UK and the EU, but in terms of section 47 of the 1994 Act and Article 52 EUTMR that registration may be declared invalid on the grounds that the Trade Mark was registered in breach of section 3 of the Act and Article 7 EUTMR.  Those provisions go on to say that where the Trade Mark was registered in breach of (b), (c) and (d) above, it shall not be declared invalid if in consequence of the use made after it has been registered it has acquired a distinctive character in relation of the goods or services for which it is registered.  However, no case of acquired distinctiveness is advanced by the pursuer and it is not therefore necessary to look any further at this qualification to the general principle that if the Trade Mark was registered in breach of section 3 of the Act or Article 7 EUTMR then it is invalid.  In the absence of any case of acquired distinctiveness, the question whether the Trade Mark falls within any of the absolute grounds for refusal must be judged as at the date of the application for registration (“inherent distinctiveness”).  In the case of the UK Trade Marks the relevant date is 1996/7.  In the case of the EU Trade Mark it is 2006.  The crucial question, to be answered by reference to the circumstances as they existed at that time, is whether the sign (in this case the words Tartan Army or The Tartan Army) was capable of distinguishing goods or services of one undertaking from those of another.

[147]    Although Mr Young argued that the pursuer’s Trade Marks in the present case failed under each of the absolute grounds for refusal, he focused his submissions on the second of those grounds, namely “(b) Trade Marks which are devoid of any distinctive character”.  He was, I think, prepared to accept that a word sign such as in issue here, as distinct from some physical manifestation such as the design or shape of a container (which might be distinctive but will not necessarily serve to distinguish in the required manner), was likely to be able to distinguish goods or services of one undertaking from those of other undertakings, that being the test in ground (a).  As he correctly pointed out, if a Trade Mark, particularly a word Mark, satisfies the second absolute ground for refusal, it is almost inevitable that it will satisfy the first and be shown to be capable of distinguishing goods or services of one undertaking from those of another.  That, of course, is the underlying test.  Accordingly, I turn to consider the question whether the Tartan Army Mark has (or had at the time of registration) a distinctive character within the meaning of ground (b).  This is a question of fact.  I bear in mind that distinctive character is to be assessed under reference to the specific goods or services for which registration is applied for, but that point is most in play when the Mark sought to be registered may be thought to be descriptive of the content or characteristics of the goods or services listed in the application (see NMSI and the examples given in the judgment).  That is what Mr Young submits is the situation here.

[148]    Mr Young’s broad point, as I understood it, is that the Mark in question in the present case could not be regarded as distinctive because, by the time registration was sought, the phrase Tartan Army was well known as a description of the travelling support for the Scotland football team and could not legitimately be commandeered by the pursuer in a manner indicative of trade origin.  I have already set out at some length the evidence relating to the origin and generally understood meaning of the term Tartan Army.  Though there may be different views as to when the term was first used, whether it is restricted to football as opposed to all Scottish sporting events, and whether, even in the context of football, it applies to all supporters or only to the travelling support at away matches, it is not disputed that the term is and has for a long time been used as a collective noun for the “disorganisation” of Scottish football fans indulging their passion to support the Scottish football team on the international stage.  That is how the term has been understood from at least the mid‑1970s if not earlier.  That is how it is still understood.  Certainly that is how it was understood when the applications for UK and EU Trade Marks were submitted.  In those circumstances Mr Young submits that the words are simply not capable of distinguishing goods or services as coming from a particular undertaking. 

[149]    I disagree.  While I accept that the term has acquired this generic meaning of referring to the mass of Scotland football fans, that does not preclude it being distinctive in the sense used in ground (b), namely capable of serving to identify goods or services for which the Trade Mark is registered as originating from a particular undertaking as distinct from goods or services from another undertaking.  The use of the term Tartan Army in connection with manufactured goods or in connection with the provision of services and promotion of those services serves to distinguish those goods and services as coming from a particular source, namely the undertaking which uses that term in the supply of such goods and services.  It does not matter whether any member of the public knows the identity of that undertaking ‑ it is sufficient that they would attribute those goods and services to an undertaking making use of that Mark, even if they did not know of its identity.  On the evidence it is clear that until Mr Adie sought to register Tartan Army as a Trade Mark, no one had sought to use that term on any goods or services.  The term was an amorphous, well understood but ill‑defined term to indicate the mass of Scottish football supporters.  As the evidence shows, many of them recognised this to be a Trade Mark identifying the goods as those of a particular undertaking, though some were surprised that it was possible to Trade Mark that term and even hostile to that concept.  The fact that many of the witnesses objected on moral grounds to what they saw as the appropriation for commercial purposes of a name by which they were known, and that many of them had not heard of the pursuer or the Trade Mark until recently and would not have said that clothing and other merchandise marked with the words Tartan Army originated from the pursuer or any other particular entity, is neither here nor there.  The question is whether the sign, ie the term Tartan Army, is capable of differentiating the goods in question as being the goods of a particular undertaking.  I have no doubt that it is.

[150]    Mr Young argued that, when attached to goods or services, the term Tartan Army was purely descriptive, apt simply to describe those goods or services as being of the type used by members of the Tartan Army.  He suggested that if in 1996, before the UK Trade Marks were filed, you had asked the average consumer or football fan what they understood by Tartan Army clothing (whether upper or lower case, since the question would probably not be asked in writing) they would have answered that that was the kind of clothing Scottish football supporters wear to games.  There may be some truth in this, though it suggests a homogeneity of appearance and dress for Scottish football supporters which is not borne out by the evidence.  Absent any knowledge on the part of that average consumer or football fan that a Trade Mark had been applied for or granted, that consumer or fan would be unlikely to ask himself whether that wording, when attached to the items of clothing, pointed to that clothing being produced by or on the instructions of the company owning the Mark.  But that evidence tells one nothing about the ability of the Mark to make the appropriate differentiation.  Once the football fan, or any other purchaser, became aware that a Trade Mark had been granted he would likely have recognised, when he next saw such clothing, that the label or other device with the words Tartan Army on it indicated that the clothing was that of the owner of the Trade Mark. 

[151]    In the course of his submissions, Mr Young sought to rely upon the fact that, on the evidence, there has been since registration “a widespread, pervasive, and non-trade mark use of the term on all sorts of goods and services”, including books, websites, T‑shirts and newspapers, all of this describing the subject matter of the goods rather than suggesting that they come from some particular single undertaking.  There may be an element of truth in this.  It is clear that the newspapers continue to use the term Tartan Army to describe the mass of Scottish football supporters.  It is clear, too, that certain supporters clubs refer to themselves as “the XYZ Tartan Army” and produce and display large banners containing such words which they take to and display at matches.  So be it.  The term is used by newspapers generally as a collective noun for the mass of Scottish football supporters.  The use of the term by local football supporters clubs is something which, as Mr Shields made clear in his evidence, the pursuer is willing to accommodate; and even if it were not willing to accommodate that, it might be that the local football supporters could justify their use of the term Tartan Army as simply descriptive of their participation in the larger mass of Scottish fans.  None of this can assist the pursuer’s case on distinctiveness.  In any event, all this is irrelevant if, as Mr Young submits and I accept, the test of distinctiveness has to be assessed as at the date of registration rather than by reference to subsequent events.

[152]    On this issue, therefore, I accept Mr Mackenzie’s analysis.  The term Tartan Army has never been used in relation to any other product.  As is demonstrated by the Arsenal and Tottenham cases, the fact that the term is often used as a badge of allegiance, in this case to the Scotland football team and its fans, does not prevent it being registered as a Trade Mark. 

[153]    In the above discussion I have focused on ground (b).  My reasoning also covers grounds (c) and (d).  Mr Young was right, in my view, to treat those grounds as, in effect, merely specific instances of lack of distinctive character, rather than as raising new issues.  Dealing with them in turn, however, I am satisfied, in relation to ground (c), for the reasons already set out, that the term Tartan Army does not describe a characteristic or quality of the goods or services concerned.  While the clothing, for example, might be similar to items worn or carried by some members of the mass of Scotland football supporters, those supporters are not so rigidly uniformed that it could be said about these goods that they are “typical Tartan Army clothing”.  There is, to my mind, no descriptive element in the pursuer’s use of the term Tartan Army.  Similarly, in relation to ground (d), I am satisfied that this is not a case where the words Tartan Army have become customary in referring to the particular goods or services.  This point has been dealt with above and needs no elaboration.

[154]    For these reasons, I reject the defender’s challenge to the validity of the UK and EU Trade Marks.

 

Revocation for non-use
[155]    Revocation is dealt with in section 46 of the 1994 Act and Articles 15 and 51 EUTMR.  Section 46 provides, so far as material, as follows:

 

46       Revocation of registration

 

(1)        The registration of a trade mark may be revoked on any of the following grounds—

 

(a)        that within the period of five years following the date of completion of the registration procedure it has not been put to genuine use in the United Kingdom, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use;

(b)        that such use has been suspended for an uninterrupted period of five years, and there are no proper reasons for non-use;

 

 

(3)        The registration of a trade mark shall not be revoked on the ground mentioned in subsection (1)(a) or (b) if such use as is referred to in that paragraph is commenced or resumed after the expiry of the five year period and before the application for revocation is made:

 

Provided that, any such commencement or resumption of use after the expiry of the five year period but within the period of three months before the making of the application shall be disregarded unless preparations for the commencement or resumption began before the proprietor became aware that the application might be made.   …”

 

Articles 15 and 51 EUTMR are to like effect.  It is not necessary to set it out in full.

[156]    Mr Young submitted that in this case the Trade Marks fell to be revoked if they had not been put to genuine use during the continuous period of five years leading up to the date on which the counterclaim for revocation was introduced into the action on 16 February 2015 (there being no proper reasons for non‑use).  That is the relevant period in this case on the proper construction of the Act.  I did not understand that to be in issue between the parties.  The relevant period for enquiry, therefore, is from 16 February 2010 until 16 February 2015.  As is made clear by Arnold J in Stichting BDO v BDO Unibank at paragraph 58, the first question to ask is:  in relation to what goods or services has there been genuine use of the Trade Mark during that period?  That is a question of fact to be decided on the evidence before the court.  That question must be answered by reference to the principles summarised in Stichting at paragraph 51, set out at paragraph [83] above.  I am satisfied on the evidence that there was significant use of the Mark from 1996 to about 2008.  More difficult is the position after that time, and in particular during the period February 2010 to February 2015.  It was common ground that the burden lay on the pursuer to show that there had been genuine use within that period.

[157]    So far as the UK Trade Marks are concerned, I am satisfied that, with certain exceptions, there has been genuine use of Trade Mark 2119111 (“Class 25:  Articles of clothing;  headgear;  footwear;  hats, scarves, pullovers, sweatshirts, shirts and t‑shirts”) during the relevant period.  Sales have clearly tailed off, but I am satisfied, on the evidence, that there have been some sales since February 2010:  see paragraph [26] above.  I accept that use of the Mark in relation to such goods has not been quantitatively or commercially significant since about 2007/2008 in terms of items sold or profits made, and I am not aware that any new lines contemplated have in fact been developed.  However, that does not matter provided that the use of the Mark in relation to the clothing has been genuine, as I find it has.  The exceptions relate to footwear and pullovers.  I do not find it established that the Mark has been used in relation to either of these.  In those circumstances I have to consider whether the specification requires to be narrowed.  The exercise is straightforward; it requires an assessment of how the average consumer would fairly describe the goods or services in relation to which the Mark has been used during that period:  see generally Maier v Asos Plc [2015] F.S.R. 20 at paragraph 65.  The protection given by the Mark should not be rigidly confined to those precise categories of goods in respect of which genuine use within the relevant period has been established, since that would be to strip the pursuer of the protection to which it was entitled, namely protection for all goods or services which the average consumer would consider belonged to the same group or category as those for which the Mark had been used and which were not in substance different from them:  (ibid).  In my view the average consumer would regard pullovers as falling within the same group or category as scarves, sweatshirts, shirts and T‑shirts.  Accordingly there is no need to delete pullovers from the specification.  On the other hand, it seems to me that the average consumer would not consider footwear as belonging to that same group or category.  In the absence of evidence that the Mark has been used in relation to footwear, it seems to me that footwear should be deleted from the specification.

[158]    I am not satisfied on the evidence that there has been any genuine use of the Mark in relation to Trade Marks 2137538 (Class 24) and 2181028 (Class 27).  So far as concerns Class 24, it was suggested by Mr Mackenzie that there was evidence of flags, bunting and banners being made and distributed.  I am not satisfied that the evidence links such items to the pursuer (as opposed to local Tartan Army organisations) or, more importantly, to the relevant period (February 2010 to February 2015).  So far as concerns Class 27, Mr Mackenzie accepted that there was no evidence of sales of carpets, but he pointed to evidence of framed pictures which, he submitted, was evidence of use of the Mark in respect of non-textile wall hangings.  That evidence relates to 2009, not to the relevant period, and does not help the pursuer.  It follows that these Marks should be revoked.

[159]    So far as concerns the EU Trade Mark 5020672, I need only deal with Classes 24, 25, 32, 35 and 41, the others having been deleted or cancelled (see paragraph [8] above).  I find that there has been no genuine use in relation to items falling within Class 24 ‑ this is consistent with my finding in respect of UK Trade Mark 2137538 which covered the same Class.  Class 24 should therefore be deleted from the specification.

[160]    As to the other Classes covered by EU Trade Mark 5020672, I find as follows:

(a)        Class 25 ‑ I find that there has been use of the Mark within the relevant period in respect of clothing and headgear, but not footwear or football strips.  The average consumer would, in my view, consider that footwear and football strips fall into different (and separate) groups or categories from clothing and headgear.  Class 25 should therefore be restricted to clothing and headgear.

(b)        Class 32 ‑ I find that there has been use of the Mark within the relevant period in relation to beers (see paragraph [32] above) but not in respect of mineral or aerated waters or other non‑alcoholic drinks, fruit drinks, fruit juices, syrups or other preparations for making beverages.  In those circumstances, again applying the average consumer test referred to above, I consider that Class 32 should be restricted to beers.

(c)        Class 35 – This is more difficult.  The essence of the Trade Mark with reference to this Class is the “bringing together, for the benefit of others” of various items to enable them to be viewed and purchased conveniently from a single site, from a retail store and/or via a retail website.  I accept that there have been sales from a retail shop and that goods have been advertised on (and sold from) the website.  But these are the pursuer’s own goods.  Mr Young submits that this is not what Class 35 is getting at.  Class 35 is concerned with physical or on‑line retailing, not just the use of a shop or website to sell one’s own goods.  I agree with that submission.  This Class falls to be deleted.

(d)       Class 41 ‑ I find that there has been genuine use of the Mark for and in respect of on‑line publishing during the relevant period.  I reject Mr Young’s argument that the use is not genuine use.  I accept that at certain times both before and during the relevant period the websites have been dormant, but that does not cover the whole of the period.  I am satisfied that there has been genuine use of the Mark in respect of on‑line publishing.  I am not satisfied, however, that this includes non-downloadable digital music from the internet.  While there was evidence of CDs currently for sale, I do not consider that CDs come within that expression.  Applying the average consumer test, I consider that non‑downloadable digital music from the internet is a separate group or category from the remainder of the items in this Class and, accordingly, it should be deleted from the specification.

[160]    Under reference to the decision of the Court of Justice in Armin Haupl v Lidl Stiftung & Co KG (Case C-246/05, 14 June 2007), in particular at paragraphs 53-54, Mr Mackenzie argued that the ebb and flow of the fortunes of the Scottish football team (presently more ebb than flow) made it perfectly reasonable for the pursuer to seek a wide protection for the Mark without actually making use of the Mark in relation to items, such as carpets, which were only likely to be marketable as and when the Scottish football team qualified for a major championship.  This applied across the whole range of Classes protected by the Trade Marks ‑ the larger and/or more expensive the item, the more justification there was for putting off use of the Trade Mark in relation to that item until the national team enjoyed greater success.  He compared the situation to that of World Cup Willie, a Mark in respect of which the court had accepted that it was reasonable not to have used it for many years.  I do not accept the comparison.  World Cup Willie was specifically linked to the success of the England football team on home soil in 1966.  It is not surprising that it will have lain dormant for many years since then without that non-use necessarily resulting in revocation.  The pursuer’s Mark has never specifically attached to one particular occasion.  Indeed the pursuer has continued to use the Mark in respect of, for example, clothing and the website despite the lack of success of the Scotland team.  The Mark has not been put into abeyance awaiting the prospect of future success.  Equally, in respect of a number of items, such as carpets, there has never been any attempt to use the Mark even when, in the early days after registration of the Trade Marks, Scotland qualified for major Championships.  I am satisfied that there are no proper reasons, as that term is used, which can justify the non‑use of the Mark in respect of the various categories of goods identified above.

[161]    I should mention, finally, Mr Mackenzie’s argument that the pursuer had conducted advertising campaigns to maintain the profile of the brand during the period of disappointing performances by the Scotland football team.  Most of the examples of this involved activities during the late 1990s and early 2000’s.  There were, I accept, some activities carried out after 2010, the most important of which were the sponsorship agreements with Belhaven and Tennents.  He argued that advertising campaigns to use or preserve market share will (or might) demonstrate genuine use.  I accept that in principle.  However, the fact is that during the period with which I am concerned, February 2010 to February 2015, sales and other activities were minimal.  I do not accept that the advertising which was carried out is sufficient to enable me to find genuine use of the Trade Marks over and above that which I have already indicated.

[162]    In summary, I find that the Trade Marks in Classes 24, 27 and 35 fall to be revoked.  That leaves Classes 25, 32 and 41, subject to certain restrictions in each Class.  I shall put the case out By Order to consider how best to give effect to these findings and the deletions which are to be made from the Trade Marks.

 

Infringement
[163]    Infringement is covered by section 10 of the Trade Marks Act 1994 and Article 9 EUTMR.  Section 10 of the Trade Marks Act 1994 provides, so far as material, as follows:

 

10       Infringement of registered trade mark

 

(1)        A person infringes a registered trade mark if he uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered.

 

(2)        A person infringes a registered trade mark if he uses in the course of trade a sign where because—

 

(a)        the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or

 

(b)        the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered,

 

there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark.

 

(3)        A person infringes a registered trade mark if he uses in the course of trade a sign which—

 

(a)        is identical with or similar to the trade mark, and

 

(b)        is used in relation to goods or services which are not similar to those for which the trade mark is registered, where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.

 

(4)        For the purposes of this section a person uses a sign if, in particular, he —

 

(a)        affixes it to goods or the packaging thereof;

 

(b)        offers or exposes goods for sale, puts them on the market or stocks them for those purposes under the sign, or offers or supplies services under the sign;

 

(c)        imports or exports goods under the sign; or

 

(d)       uses the sign on business papers or in advertising.”

 

Article 9 EUTMR is to similar effect.  I need not set it out.

[163]    In considering the question of infringement, it is important to identify the acts complained of.  The pursuer’s complaint is mainly against the publishing of the Magazine and the promotion and operation of travel and entertainment services in connection with travelling support to away matches.  I shall consider them separately.

[164]    I deal first with publication of the Magazine .  The Magazine is published under the name “The Famous Tartan Army Magazine”.  The pursuer contends that infringement is established in terms of section 10(1) (identical mark, identical goods or services).  In terms of the services, I accept that the Magazine is identical to the pursuer’s on‑line publishing ‑ it is an on‑line magazine, with a similar type of content and intended for the same audience.  But I do not accept that the mark is identical.  Obviously the defender’s sign includes the words Tartan Army.  But the surrounding words are important.  The word “magazine” is no more than descriptive of the publication ‑ it is a magazine, albeit an on‑line magazine.  But the word “Famous” is more important.  I do not accept Mr Mackenzie’s submission that it is merely laudatory or promotional.  The word is used to qualify Tartan Army rather than the magazine.  To my mind it conveys the meaning that the magazine is for, or owes its allegiance to, the “famous tartan army”.  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.

[165]    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.  As I have already said in the context of holding that the signs are not identical, the wording of the magazine title is such as to direct attention to the famous tartan army, the “disorganisation” of Scotland football fans, and to hold the Magazine out as a magazine belonging to the fans.  It does not point naturally to an association with the pursuer.  The attempt to establish infringement under this head therefore fails.

[166]    Finally the pursuer seeks to establish infringement in terms of section 10(3) of the 1994 Act on the basis that the defender’s sign is similar to the pursuer’s mark and is used in connection with goods or services which are not similar at all.  On this basis the pursuer needs to show that its Trade Mark has a reputation in the UK and that the use of the similar sign by the defender takes unfair advantage of that reputation or is detrimental to the distinctive character or repute of the Trade Mark.  I accept that a likelihood of confusion is not required.  But the pursuer has to show “dilution” of the distinctive character of the mark or “tarnishment” of its repute; or that the defender is “free-riding” on the distinctive character or repute of the mark.  Mr Mackenzie submitted that this was a case of free-riding, but I do not accept that argument.  Certainly the pursuer’s Trade Mark is distinctive ‑ otherwise it would not be validly registered ‑ but I do not accept that it has a particularly strong distinctive character.  There was no substantial body of evidence to suggest that it was widely known amongst the mass of the Scotland football supporters.  Even if it were more widely known than it is, the lack of confusion is a factor of some importance.  Unless there were a possibility of confusion, or perhaps more accurately association, between the two marks, there would be little risk of diversion, tarnishment or free‑riding.  I have already sought to identify the significant difference between the defender’s sign and the pursuer’s mark by reference to the use of the word “famous” in the Magazine title.  To my mind that it is sufficient both to prevent any real possibility of confusion or association and to mean that there is no element of free-riding.

[167]    I can deal more briefly with the complaint about the travel services offered by the defender under the banner of The Famous Tartan Army Magazine.  The pursuer does not currently have a registered Trade Mark in any relevant category ‑ the EU Trade Mark in Class 39 (travel agency services etc.) was cancelled with effect from 31 March 2016.  In those circumstances any claim for infringement now, whatever may have been the position earlier, has to be considered in terms of the section 10(3) of the 1994 Act.  The claim fails for the reasons set out in the preceding paragraph.

[168]    The claim for infringement therefore fails

 

Passing Off
[169]    I turn to the claim in passing off.  I accept Mr Mackenzie’s argument that the pursuer has goodwill in its goods and services promoted under the name “Tartan Army” or “The Tartan Army”.  But I do not accept that there is any misrepresentation on the part of the defender in publishing the Magazine under the title The Famous Tartan Army Magazine or in promoting travel services for football supporters under that name.  My reason for this is identical to my reasons for finding that infringement under the 1994 Act was not established.  In short, there is no likelihood of confusion between that which the pursuer offers and that which is offered by the defender;  nor is there any likelihood of the public being deceived by the defender’ s use of a title which includes the words “Tartan Army”.  I consider that most potential customers or consumers, being Scotland fans or, to put it another way, members of the tartan army, would understand the name of the Magazine to refer to them (and the Magazine to be for them) rather than as a reference to the pursuer or its products.

[170]    In those circumstances the claim in passing off fails.

 

Disposal
[171]    Subject to hearing from parties as to the precise terms of any interlocutor, it seems to me that I should give effect to my conclusions by granting decree of absolvitor in respect of the Conclusions of the Summons.  In terms of the Counterclaim, I should grant decree in terms of the Fourth Conclusion thereof, restricting the EU Trade Mark 5020672 by deleting Classes 24, 27 and 35 and restricting the terms of Classes 25, 32 and 41 in the manner indicated.  I would welcome submissions by parties as to the correct way of doing this.  Quoad ultra I should grant decree of absolvitor in respect of the Counterclaim too.  Before pronouncing a formal interlocutor in these terms I shall put the case out By Order on a date to be fixed for parties to address me as to its terms.

[172]    I shall reserve all questions of expenses.  I would anticipate parties addressing me on the question of expenses at the By Order hearing.