‘Trade mark use’ in Europe: revisiting Arsenal in the light of Opel and Picasso

Abstract

The European Court of Justice (ECJ) decision in the case of Arsenal Football Club v. Reed led to uncertainty regarding the practical scope of a trade mark proprietor's property rights. The uncertainty resulted from a failure of the ECJ to address clearly the issue of what constitutes infringing trade mark use. The ECJ ignored the question of the High Court as to whether use of a trade mark as an indication of origin is necessary for establishing infringement. They instead established an ambiguous standard for what constitutes infringing trade mark use, suggesting that only use that jeopardises the essential function of a trade mark is an infringing use. This ambiguity has had problematic implications for subsequent interpretations of trade mark law, particularly in the Court of Appeal in Arsenal and the House of Lords in R v Johnstone. Two relatively new ECJ cases may help clarify the issue. In OPEL, the ECJ suggested that infringing use of a trade mark must be use that is perceived by the relevant public as a designation of origin. The Picasso decision limits the effect of the Arsenal decision on the relevance of confusion in non-sale situations to the facts of Arsenal. In particular, it stresses the point that when assessing likelihood of confusion in the context of an opposition to an application for registration the court should focus on the perception of the relevant public at the point of sale. The benefit of these two cases is that they create some clarity for legal practitioners and the Courts when addressing the question of what constitutes infringing trade mark use.