'Tartan Army' case shows well-known words and phrases can be trade marks, says expert

Out-Law News | 13 Feb 2017 | 3:13 pm | 3 min. read

A recent ruling by the Court of Session in Edinburgh shows that well-known words and phrases can be registered as trade marks, an intellectual property law expert has said.

The judgment, however, highlighted the challenges rights holders of those marks can face if they wish to assert their trade mark rights, David Woods of Pinsent Masons, the law firm behind Out-Law.com, said.

The case concerned a long-running dispute between a company, Tartan Army Limited (TAL), and a football magazine publisher, Alba Football Fans Limited.

TAL claimed that Alba had infringed its UK and EU trade marks for the words 'The Tartan Army' and that Alba was also liable for passing off. TAL's claims related to Alba's publication of 'The Famous Tartan Army Magazine' as well as its organisation of travel services under that name.

In defending the claims, Alba challenged the validity of Alba's trade marks. It said the phrase Tartan Army is "well known as a description of the travelling support for the Scotland football team" and claimed TAL 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", according to the judgment.

Witness statements supporting Alba's case stemmed from a number of well-known football personalities in Scotland, including former Scotland national team manager Craig Brown, commentator Archie MacPherson and journalist Chic Young.

In his judgment, however, Lord Glennie rejected Alba's challenge that TAL's trade marks were invalid. He said: "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".

However, the judge ruled to reduce the scope of TAL's trade mark rights after determining that there had been no "genuine use" of the trade marks for some classes of goods, including flags, bunting and banners, and wall hangings.

In addition, Lord Glennie rejected TAL's claims that Alba was liable for trade mark infringement and passing off. He said the title of Alba's publication, 'The Famous Tartan Army Magazine', was not identical to the 'The Tartan Army' mark and that, despite being similar, TAL had failed to show there was a "likelihood of confusion on the part of the public" between Alba's use of the mark and its own.

Lord Glennie said: "The evidence does not suggest that anyone becoming aware of the Magazine would associate it with [TAL] or any of [TAL's] products bearing the words Tartan Army.  Nor does it seem to me to be likely that there would be any such confusion."

The judge also said that TAL had failed to show that its trade mark had a reputation in the UK which had been taken unfair advantage of by Alba. He rejected the argument from TAL that Alba had been "free-riding" on the reputation of its mark.

Lord Glennie said: "Certainly [TAL'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." 

The judge's finding of a lack of likelihood of confusion also undermined TAL's claim that Alba was liable for passing off.

"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 [TAL] or its products," Lord Glennie said. "In those circumstances the claim in passing off fails."

David Woods of Pinsent Masons said: "This case is a timely reminder that well-known words and phrases can qualify for trade mark protection, and that businesses wishing to make use of those marks cannot assume that those common terms are in the public domain and free to exploit. The judge in this case dismissed moral arguments put forward as to why 'The Tartan Army' should not be eligible for trade mark protection, and instead applied trade mark law in determining the mark was sufficiently distinctive to be registered as a trade mark."

"Yet, the case highlights the difficulty businesses that register popular words and phrases have in asserting their rights in those marks. Businesses need to be able to show the public link the use of their mark with their brand, but there is an inherent challenge in doing so where the words concerned are in common use and have broader associations than to just the goods or services for which the trade mark is registered. Without that link being established, businesses are also unlikely to be able to show there is a reputation in that mark which has been sullied by others' use, or that they have sufficient goodwill built-up to sustain claims of passing off," he said.