Intellectual Property Law: Scope of Protection for Registered and Unregistered Designs in the UK

LA6086
Intellectual
Property Law
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Table of content
INTRODUCTION...........................................................................................................................3
MAIN BODY...................................................................................................................................3
Facts of the case.....................................................................................................................3
Issues......................................................................................................................................4
ECJ(European Court of Justice) Judgement view contrary to the English High Court........4
Part- B..............................................................................................................................................5
What is the difference in the scope of the protection of registered and unregistered designs in
the UK? Discuss by reference to statutory provisions and case-law.....................................5
CONCLUSION..............................................................................................................................12
REFERENCES..............................................................................................................................13
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INTRODUCTION
Intellectual property right secures the rights of inventor and promote the invention. With
the rapid growth of an economy, the demand of intellectual property rights becomes more
important. In the United Kingdom, trademark law provides wider protection to the brand owner.
The UK legal system provides enforcement mechanism to secure the interest of the inventor.
Trademark law enacted to avoid confusion of product, design, name, symbol associated with the
identification of the product (Smyth, 2021). Common law provides protection from any kind of
infringement and provide legal protection to the product owner. In the UK, trademark can be
registered within the territory through easy registration process. An IPR gives an exclusive right
to its owner over the use of his invention for certain specified period of time. It promotes human
creativity through which individual applies his mind and contributes for the development of an
economy. It is believed that an IPR is an award for the inventor and reward for the investors.
This report will examine the essential function of trademark with the help of leading case of
passing off.
MAIN BODY
Facts of the case
Arsenal was the owner of Arsenal Football Club plc, named as “the Gunners” established in
the year and has registered two words under trademark, “Arsenal” and “Arsenal Gunners” for the
purpose of distinct his articles of clothing and sports footwear within Class 25 of International
trade mark Act. There was another trader named Mr. Matthew Reed who has been selling his
clothing product outside the football stadium linked to the claimant club. The items were market
as 'Arsenal” that product was advertises unofficially in the stalls. Arsenal notices and brought an
action against the Mr. Reed for 'passing off' an infringement of trade mark rights. The High
Court was dismissed the case on the ground, that claimant club fails to show necessary doubt on
the part of consumer and unable to show the unauthorised products sold by the defendant were
regarded by public from Arsenal or marketed with its authorisation. Later, second action of
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plaintiff was rejected as respondent uses the product was perceived by consumers as use of
indicating the origin and considered as the use of “trade mark use”. Later, the respondent has
taken the defence by expressing his argument that law aims to the owners of registered
trademarks to prevent people from misrepresenting the origin of their goods and services and
argued that his product did not misrepresent where the goods is lawful (Mendes, 2019).
Issues
 Whether a trademark is validly registered or not.
 If yes, the fact which understood as a badge of support, loyalty is connected with the
trade mark proprietor.
ECJ (European Court of Justice) Judgement view contrary to the English High Court
The Court of Appeal has overturned the decision of Mr Justice Laddie by ruling out that when a
third party uses an identical sign to a validly registered trademark, then it allows the owner to
prevent a third party from its use. The ECJ held that the mark ' Arsenal' was a badge of
Allegiance, rather it expresses its origin of the product, but Mr Reed had made clear point by
stating that the goods were not official Arsenal FC goods and because of that he was not liable
for its infringement (Thaub and Dennis, 2020). Whereas, the Court of Appeal remarked that the
mark may be known as a badge of allegiance that would not prevent a third party and guarantee
the origin of the goods. The High Court held that it should follow the ECJ decision in the
pronouncement of judgement for Arsenal. After that, the Court of Appeal considered the second
issue and held that the use of the word 'Arsenal' on a scarf represents that the owner was a
supporter and the scarf came from Arsenal. The use of a trade name is a violation of the TRIPS
Agreement of Article 16(1). The condition used was the sign for infringement of the sign used on
the product. Therefore, ECJ has recognized the importance of function provided by the
trademark Act. But, Laddie J was not satisfied with the arguments made by the ECJ as they are
exceeding his power to interfere in the matter.
Laddie J Ruling
The English High Court refused to the claim made by Arsenal for passing off because of lack of
evidence to prove the actual consumer confusion in regards to infringement of trademark claims
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