UK NEWS

Roses Are Red

The England rugby union team is well known around the world for playing their home matches at Twickenham, losing important games and wearing a red rose emblem on their white shirts. The trade mark rights to the red rose are owned by the Rugby Football Union (RFU) who exclusively licence the US sports clothing giant Nike to be England's official kit supplier. This arrangement has been in place since 1997.

Fran Cotton played rugby for England from 1971 to 1981. In 1974 he was a key figure in the British Lions team that won a series in South Africa. After retiring from the game, he set up the clothing company Cotton Traders with another former England international Steve Smith. The company, which now has an annual turnover in excess of £30 million, specialises in the sale of rugby shirts as leisurewear. Until 1997, they supplied England with their kit. However, it is reported that Nike paid Cotton Traders £2 million to conclude this arrangement. In spite of this agreement with Nike, Cotton Traders have allegedly continued to sell England rugby shirts bearing a red rose.

It is now reported that the RFU and Nike are suing Cotton Traders for trade mark infringement and passing off over their alleged sale of "bogus" England shirts bearing a red rose that is confusingly similar to that registered by the RFU for clothing (see CTM236828 and 1068824). It is also claimed that Cotton Traders is in breach of their 1997 agreement with Nike. The case is a particular embarrassment for Fran Cotton since he is not only a director of Cotton Traders but also a member of the RFU's management board. It is not known when the two sides will get the chance to scrum down but the outcome of this particular maul is awaited with great interest.

Comment

The background to the RFU's and Nike's breach of contract claim against Cotton Traders is not known. However, the facts in the trade mark infringement and passing off claims appear to be very similar to those in the Arsenal merchandise case that was reported in the Autumn 2001 edition of Make Your Mark. In that case, the English Court found that there were some Arsenal supporters who bought official merchandise knowingly and out of choice. However, there were other Arsenal supporters who bought unofficial merchandise bearing Arsenal, The Gunners and/or a crest device simply to show their allegiance to the football club. They had no interest in who made or marketed this (unofficial) merchandise. Arsenal were unable to show any instances of actual or likely consumer confusion involving the unofficial goods at issue in the case.

On the same basis, it could be argued that the sale of a white rugby shirt bearing a red rose does not indicate trade origin, that is a connection with the RFU or their licensee Nike, but rather a sign of support, loyalty or affiliation to the England rugby union team. Thus, if the RFU/Nike are unable to produce instances of actual or potential confusion they could find the Arsenal precedent difficult to overcome.

Having said that, the key issues in the Arsenal case are now before the ECJ for a definitive ruling. In particular, the question of whether it is a defence to trade mark infringement to use a registered trade mark in a way that does not indicate trade origin (that is, in a non trade mark manner) awaits an answer. The ECJ's ruling on this point may have a profound effect not only on the protagonists in the Arsenal and England (rugby union) cases but also, more generally, on a sports merchandise industry that traditionally has found room for both official and unofficial products.