Intellectual Property Law Report: Arsenal Case Study

This report delves into the intricacies of Intellectual Property (IP) Law, focusing on trademark and design protection within the United Kingdom. It begins with an analysis of the "Arsenal" case, exploring the legal arguments and judgments of both the English High Court and the European Court of Justice (ECJ) regarding trademark infringement. The report examines the validity of the trademark, the concept of a "badge of allegiance," and the implications of the ECJ's decision. The second part of the report contrasts the scope of protection afforded to registered and unregistered designs in the UK, referencing relevant statutory provisions and case law. It highlights the requirements for design registration, the rights conferred, and the differences in enforcement mechanisms. The report also discusses the duration of design protection, the concept of originality, and the exceptions to design protection. Overall, the report provides a comprehensive overview of IP law, specifically trademark and design protection, and their application in the UK legal system.

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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made by the plaintiff and referred this questions to the European Court of justice to further
decide the two issues (Kuma, 2019). He was not satisfied with the ECJ's findings of fact and said
that they had to focus on the essential function of the trademark. Laddie J held that use of the
product was not recognised as indicating a trade origin. He dismissed the ruling made by the ECJ
and declared it as an exceeding of his jurisdictional power under Article 234EC.
Judgement of Court of Appeal
This leading judgement was the changing factor on the matter related to infringement of
trademark legislation, the decision made by the different Courts are debatable issue and different
jurist decide this matter in different ways. The Court of appeal delivered the judgement in the
favour of Arsenal, an appellant. The Court ruled out that they have jurisdiction to address the
matter and decision has a binding force on the parties. Further, the Court stated that sign used by
the respondent is the infringement of appellant's trademark right and the product's actual owner
is the Arsenal. They Court also distinct between the 'trademark use' and ' descriptive use' of
product (Charisma and Honiara, 2022). Therefore, the Court applied the principles laid down by
the ECJ's without any change in it and made their different prospective over this matter. The
appellant has raised an issue that any commercial activity carried to achieve economic advantage
to use in trade may affect the essential function of trademark. The Article 5(1) of the directive
guaranteed the origin of the consumers where the product actually designed.
Part- B
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.
The UK has provided wider protection to the registered and unregistered design. Design
law includes shape, configuration, any 3D and 2D design, texture and materials etc. The process
of registered and unregistered design is quite complex in the U.S. Under the U.K legislation
many provision has been enacted to provide protection to the registered design (Johnson, 2019).
The UK system provides two types of protection includes registered design and unregistered
design. Whereas, unregistered deign are not fully protected and cannot claim against copying of
their design. In the registered design, exclude others from its use, sell, export and copying and
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found to be guilty for intentionally copy a design, will be liable under the U.K registered design
law. This is one of the major drawback of unregistered design, the claimant cannot claim for its
violation of his unregistered design because it is not being protected by registering it. The
accuser has to prove the case that he has used the design with the consent of the design owner. In
the UK, if an act of intentional copying is done by any person, or copied, used then he is liable
under criminal law within the territory of the UK. The definition of unregistered design is
narrower than the registered design. Additionally, in order to protect design form unregistered
design, it should be original. There are two essential requirements has to fulfilled to protect an
unregistered design. Firstly, an owner must be a resident of the U.K and company has been
incorporated in any of the qualifying countries. In many instances, it is permissible to use
someone else design in order to run activities like non-commercial, experimental use and
teaching purpose and other act related to it (Brewing and Skjolsvik, 2018). The process of
registration of design covered a wide variety of products which includes design in the form of
shape, pattern applied to a product. In order to protect new design, it is advisable to registered
design to prevent it from third party. There are many rights are available to unregistered design
and generally provided for a period of 10 years. It provides an exclusive right to the design
owner against any copying. Design is the best way to promote the goods and branding of any
business. It is a comprehensive procedure and essential requirements has to be fulfilled to get the
registration of design. Firstly, the product should be new, unique and non-obvious and must have
industrial application. In the United Kingdom, registration process of design requires less money
and procedure is relatively quick and easy. The main objective of design is to produce new goods
in the market and promoting the brand values in the United Kingdom market. The UK is a
member state of the agreement known as WIPO (World Intellectual Property Organization)
which is not only provide protection to all the intellectual property rights but also provides easy
and simple procedure for registration (Lee and Geidel, 2021). Design right reflects the overall
image of the product and provides appearances and quality of the product. The registration
process of design was established in 1839. The special provision for unregistered design was
incorporated in section 213 under copyright, designs and patents legislation. The current
legislation system focuses on recent amendments which is made for trade mark and design rights
to protect aggrieved person form threat. Under the Act of trademark, design and patent inserted
section 32 which specifically deals with the infringement as a ground of threat and to initiate
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action for its violation. There are many provision which provides wider protection to the owner
of the intellectual property rights includes the Patent Act, the Trademark Act, The community
Trade Mark law of 1994, the registered design legislation of 1949, the copyrights, trademark and
patent Act,1988. Therefore, the registered and unregistered design are to be protected before the
Intellectual Property office to apply for its registration process. The application can be made by
any person who is author and design is made at the time employment, design is done by owner
itself, design is assigned. Design law offers strong protection to the proprietor from unnecessary
access overt its right. The UK is a developed country who promotes invention, introduce
industrial product required to improve financial soundness of that company. The unregistered
design and registered design owner, certain essential requirement is done to entitled for its
registration (Miller, 2020). The design plays significant role in the growth of UK, economy and
innovation. The protection of design enables the design owner to protect their private right and
its creative mind. Also, the Paris Convention of 1883 deals with thwe protection of industrial
design. It obliged member states to apply the principle of national tratement and gives wide
range of IP prtection. The changing era in the design protection over the period of time in the
UK had greater influence on its growth. The registered design provides significant benefit to the
owner, well protected, renowned companies register their design from any kinds of infringement.
With the passage of time, contribution of design ensures the higher return on investment and
encourage the creativity and manufacturing sector to develop more IP design to promote
economic development. In the case of Bonito Boats V. Thunder Craft Boats, the Supreme
Court of UK stated the essential criteria required for registration of design and appearance of the
design. Likewise, design should be original and new only qualifies them for protection of design.
Under Article 3(1) of CDR defines the word ‘design’ as appearance of product as a whole or part
of any product, includes features, lines, contours, textures, or its ornamentation. The word
‘design has very broad meaning and includes handmade product under the purview of design.
According to Australia design Act, ‘design’ shows overall outward look of product defines under
Section 6. Design law provides protection to the qualifying person and it refers to a person who
registered their design in qualifying country (Francis, 2018). Here, qualifying country is the UK
or any other EU country and person is citizen of that qualifying country can be called as
qualifying person. Design law is almost similar to the copyright and provide protection to the
design owner. Infringement of IP rights makes liable to the third party for unauthorized use of
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registered and unregistered design. The registration process of design is comparatively cheaper
in the UK as compared to other country. Design includes 3D and 2 D design but unregistered
design is provided only for three dimensional design whereas unregistered design covers all
important aspects of design and can be don its registered. When any dispute arises, IPO provides
dispute resolution mechanism to settle the dispute arises due to violation of IP rights. It is very
difficult to prove in unregistered design because it is not registered before an IPO. In
unregistered design, onus of proof for the infringement lies on the design owner and quite
complicated to make liable for unauthorised use. Currently, the UK has various protection
legislation are available to protect the design and right of the design holder. The UK registered
design creates monopoly in the European Union and prescribe the fees for its registration. The
Community registered Design (CBD) provides its owner to protect their creativity in design form
third party. There is another provision which specifically deals with an automatic right associated
with the design owner after get registered under Design Law. There is separate provision for
unregistered design which ensures limited protection for a period of 15 years. The UK is a
signatory member of Geneva Convention, 1999 which allows The United Kingdom effective
protection to wide range of IP rights to promote commercial activities which contributes in the
growth of the economy. In the case of Beifa Group Co Ltd. v. Ohim and Schwanstabilo
Schwanhauber GMBH @& Co. KG General Court ECR, 2010, in Para 75 ,the Board of appeal
concluded that design in wider term should distinguish the features of that design to enhance the
scope of the product. Also, differentiated the contested design with the three dimensional mark
were similar but not completely identical. The UKIPO examines the novelty of the product and
examines the originality of the design to grant The Court held that the design used by the
respondent is infringing the right if the design holder. It was made pure legal differences between
the 'monopoly right' to the registered design and 'prevent from its copying' of an unregistered
design. The feature of design is to be exempted from any protection on the basis of must fit and
must watch features, these features provided limited protection to the spare parts of the product.
As per the matter of Honeywell Analytics Limited v. Hee Jung Kim Case R 609/2006, the Court
held that owner of word mark should not be able to avoid use of marks of ordinary goods which
may be distinctive for some goods. The design law gives its owner special right to use their right
for commercial use and exempt third party from using it without owner's consent. An IPO can
refuse from registration of design on the grounds, when it does not meet the essential
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requirements of administrative needs for making application, unsuitability of design, not meeting
the basic definition of design or deign is contrary to the public policy. The design holder may file
an appeal either to the Appointed person of High Court in England or Wales and session Court of
Scotland. For any infringement of design, action can be initiated against infringer in the High
Court or before the Intellectual Property Court (IPEC). An action before the Court includes pre-
trial stage where parties are allowed to exchange of pleadings and attend the court proceedings,
then disclosure is made and exchange of facts evidence will take place at this stage. These
proceeding conducted with the aim to settle the dispute mutually and generally take place for 12-
18 months depends upon the complexity of cases. The UK Court usually grants injunction for the
infringement of design rights. If any person causing threat to the aggrieved person then
injunction can be issued against him. Thus, many right are also available to the defendant where
they can take their stand for non-infringement includes design used for good faith or use for
teaching purpose, design is exhaustive, and not responsible for an act of infringement. The Court
is responsible for analyzing the damages suffered by the claimant which includes loss of sale,
loss of license and user principle are those methods which analyses the loss caused to the design
owner. Whereas, unregistered design is protected when they satisfy all the essential requirement
of design and can claim damages for its infringement. The United Kingdom examines the
significant growth in the areas of intellectual property rights. Many important amendments have
been taken place in last few years which includes right available to unregistered design owner
and international regime has been adopted. In the matters of Nike International Ltd v Hanna
Abdallah Ricardo (ICD 6062, the Court examined the validity of stylized words can be expressly
registered as RCDs. Under Article 3(b) of the Council Regulation on Community Designs
termed ‘product’ to include “graphic symbols”. In this, the invalidity division refused Nike’s
claim that a depicted RCD did not meet criteria of ‘design’. Designs for a component part of a
complex product which would not be register able if it is not visible during normal use under
Article 4(2)(a).The Court observed that , there must have a complex product. Thus, a person can
be protected even if it is not visible during normal use because it is a part of a complex product.
Under section 213 right of the design provided to the original design includes shape and
configuration and overall appearance of the design. The design law in the UK provides certain
exclusion in the section 213(3), design right does not apply on method and construction and
feature of the shape, any surface which is decorated are exempted under Registered Design law
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of 1949. Also, under section 226, exclusive right available to the registered design holder to use
it for commercial purpose and design the document for the purpose of using it. Infringement can
be primary and secondary where primary includes where any person authorize happens when any
unauthorized person in any way authorized other person to use it as an exclusive right. Whereas
secondary infringement of design happens due to any unauthorized import of right for
commercial purpose and sufficient reason to believe that article is infringed by any way made
him liable for infringement. In the matter of Ocular Sciences Ltd. v. Aspect Vision Care Ltd.
[1996] EWHC, the Court observed that the proprietor has right to choose to assert design right
either in whole or in part. If there is right to reside the design of tea pot, then it means part spout
as spout. Thus, proprietor has right to trim his design and right to claim the most closely match
what he assumes the defendant has to be taken. The government was enacted the design
legislation to exclude the concept of copyright from the purview of industrial design in the year
1988. Design protection examined recent development to provide wide range protection to the
product and its owner. Design has influenced marketable growth to enhance the creativity of the
design owner and provide them legal protection from its infringement. The UK system gives
monopoly right to its owner to expressly use the product and exclude public from its use. The
design should not be a copy of other’s design and prevent third party. The protection provided
by the UK legislation to increase the growth and development of the economy to ensure the
interest of the right of owner of IP rights. Registration of design provides the owner better
protection from any kind of threats and violation of his rights. The design is exempted to be
register if it is offensive, lack of individual character and any other fault is found to be at the time
of registration. The UK’s legislation based on international and national principal for governing
the legislation to protect the design includes intellectual Property Act 2014 is an amendment of
the Act 1988 and the Geneva Act provides legal principles that required for registration of design
by WIPO. Also, the EU Directive on legal protection and EU council on community deign are
the legal framework that safeguard the interest of design holder. The examination of an
application is taken place by the UKIPO and find out the essential criteria are to be fulfilled by
the product. The procedure for design is unique and provide substantive protection to the owner
and encourage the fair registration mechanism. In the case of Philips v Remington [1998] RPC
283 , para 318, it was observed that the evidence of the designer, whether the person was trying
to make, or thought made, a breakthrough, is irrelevant. The evidence of professional experts,
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particularly about consumer products, is unlikely to be of much assistance, anyone can point out
similarities and differences, though an educated eye can sometimes help a bit. Sometimes there
may be a piece of technical evidence which is relevant such as. that design freedom is limited by
certain constraints. It is well established principles in the UK, any design meeting the essential
criteria for its protection can be protected even without registration. The scope of this legislation
is wider and provide wide range of protection and benefits to its owner therefore, it encourages
the inventor to design more products and secure their rights within the territory of the UK. The
UK is well known for its legal framework because it emphasis on providing regulatory bodies
that work for the welfare of their citizens and given them well established legislation (Geradin
and Katsifis, 2021). The UK’s common law is known for imparting justice to its people and
equity principle applied on its citizen and IPR are also part of it where the fundamental rights are
to be ensured them to applies their mind for better output and design of the product is one of
them. The design is required to attract the consumer for the product and inspire them to buy
particular product from its unique design and texture. In the case of Kwang Yang Motor Co. Ltd.
v. Honda Giken Kogyo Kabushiki Kaisha T-11/08 ,the Court observed that the assesment of an
individual character of the challenged design, it must be examined. Also, the overall impression
that that design produces on an informed user is different from that produced by earlier designs.
The design relied on by the applicant in support of the application for a declaration of invalidity,
taking account of the degree of freedom enjoyed by the designer when developing the design.
The best example of design product is Coca Cola bottle which is unique in itself and has brand
value in the market. The consumer expectation can be met only when it is unique and different
from the other business. Product quality and its design plays major role in attracting the
consumer towards the product and it can be happening only when the design of the product is
new and dissimilar with the other product. The shape and design of the many products are the
SOP of that product and helps them to compete in the market. The concept of design is very
older and many amendments has been taken place to standardize this area and possibly by way of
Intellectual Property Rights. The IPR has emerged after the liberalization and globalization of
economy and advancement in technology give rise to the protection of inventor’s right. The
economy of the country depends upon the availability of IP rights of that country because more
IP means more invention which leads to more growth and development. There are many
international treaties and agreements which specifically deals with the protection of IPR. In the
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case of Shenzhen Taiden Industrial Co. Ltd. v. Ohim and Bosch Security Systems T-153/08,
ECR 2010, Under Article 6(1) of Regulation No 6/2002 makes difference between the overall
impressions produced by the designs that defines the individual character of a Community
design cannot be examined in the light of specific features of various earlier designs. Therefore,
a comparison should be made between the overall impression produced by the contested
Community design and, on the other, the overall impression produced by each of the earlier
designs legitimately relied on by the party seeking a declaration of invalidity. The member state
is bound to such agreements and made many legislations to give rights to their inventor and
secure their rights by registering their design product and proper mechanism has been made to
make simple and easy procedural system for its registration. The TRIPS Agreement of trade
Related aspect for Intellectual property rights are simplifies the registration process and covers
all aspect of intellectual property such as trademark, design, copyright, geographical indication
(Aguda 2018). There are many provision in TRIPS that allows its member state to make statutory
body that governs all the activities that promote innovation and invention.
CONCLUSION
From this above report, it has been concluded that intellectual property rights are
beneficial asset for the country in order to promote innovation and new ideas. It helps to secure
the private rights of the inventor and promotes creativity. There are many provision in the UK
legislation that provides wide range of protection to human creativity and new product. It is very
necessary to protect their rights by way of its registration under any law so that no infringement
and threat to be caused to the owner of Intellectual property. The common law provides its
owner to invent more product and apply human mind for the development of economy which is
directly in relation to the IPR.
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