‘Tartan Army’ case illustrates popular names can be protected as trademarks

A recent ruling by the Court of Session in Edinburgh confirms that well-known names can be protected by trademark registration.

Background

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

Tartan Army, owner of UK and EU trade marks for ‘THE TARTAN ARMY’, a term affectionately given to fans of the Scotland national football team, sued Alba for infringing its trade marks via the publication The Famous Tartan Army Magazine, as well as passing off Tartan Army’s reputation in the marketplace. Tartan Army requested an order prohibiting Alba from infringing its trade mark rights, for destruction of all products and promotional material, and for expenses.

Defending the claims, Alba challenged the validity of the Tartan Army’s trade marks. It argued that the name ‘Tartan Army’ is “well-known as a description of the travelling support for the Scotland football team” and accordingly is not sufficiently distinctive to qualify as a trade mark.

In support of Alba’s counterclaim, witness statements from a number of eminent football personalities in Scotland, including the former Scotland national team manager Craig Brown, commentator Archie MacPherson and journalist Chic Young, were lodged.

Judgment

In his ruling, however, Lord Glennie dismissed Alba’s counterclaim and ruled that the Tartan Army’s trade marks were valid. Although ‘Tartan Army’ is often used as a “badge of allegiance”, he confirmed that does not stop the term from being registered as a trade mark.

Nevertheless, Lord Glennie ruled that Alba had not infringed Tartan Army’s trade marks on the basis that there was no likelihood of confusion by the public. He said: “The evidence does not suggest that anyone becoming aware of the magazine would associate it with the pursuer (Tartan Army) or any of the pursuer’s products bearing the words ‘Tartan Army’. Nor does it seem to me to be likely that there would be any such confusion.”

The finding of a lack of confusion also led Lord Glennie to reject the Tartan Army’s passing off claim.

Comment

This case illustrates that well-known names can be validly protected through trademark registration, but also demonstrates the need for businesses to perform a brand clearance search in advance of making any commercial use of such popular names. Finally, the case highlights the difficulty in enforcing such well-known names.

For further information or advice on how you can protect your brand name, contact us.