Trebor Bassett Limited v Football Association Limited

Date

16 October 1996

Legislation

Trade Marks Act 1994 ss. 1, 9, 10, 21

Keywords

threat; infringement; trade mark use

Counsel

Adrian Speck, Christopher Morcom QC

Solicitors:

Willoughby & Partners; Bird & Bird

Judge:

Rattee J.

Court:

High Court (Chancery Division)

Reported:

[1997] FSR 211

Summary:

The Claimant manufactured confectionery that it sold in packets together with cards containing photographs of well-known footballers, some of whom were pictured wearing their England strip. The strip featured the 'three lions' device, a trade mark registered in the name of the Defendant, who alleged that this was an infringing use of their mark. The Claimant brought proceedings for unjustified threats under s. 21 of the TMA 1994, and the Defendant sued for trade mark infringement. The Claimant then applied for summary judgment in its first action, and to strike out the Defendant's action.

Decision:

The judge held that the Claimant was not using the Defendant's trade mark in relation to any goods or services, nor was the Claimant using the trade mark as a trade mark. The Defendant's mark appeared on the card purely incidentally, because the footballer in question happened to be wearing the England strip. Indeed, it was unreal even to say either that the Claimant was affixing the mark to its goods, or that it was putting the goods on the market under the mark. Judgment was given to for the Claimant in both actions.