The Scottish Court of Session in Tartan Army Ltd v Sett GmbH and Others  CSOH 22 has held that the claimant's allegations of trademark infringement and passing off were not substantiated. The case is interesting given that the judge rejected the main arguments of the defendant yet still found in their favour.
The claimants owned UK and EU registered rights over the phrase 'Tartan Army'. They had used the trademark for fan merchandise and had granted some licences however neither resulted in large financial returns. Thus use of the mark was sparse. It had only been used in classes 25, 32 41 since 2010. The defendants were the publishers of 'The Famous Tartan Army' magazine who sought to argue that their use of the mark for their magazine did not infringe the rights of the claimants nor provided grounds for passing off.
The defendants' first argument was that the claimants could not allege any infringement since they had granted the defendants a licence in 2005 authorizing use for their magazine which did not stipulate whether the permission was revocable or not. The claimants had purported to terminate this licence in 2008. The defendants sought to rely on estoppel to trump this argument. However, the judge rejected the defendant's argument on the grounds that the defendants had begun to use the trademark for an upcoming issue of their magazine and because notice to terminate the licence was given in 2008 and this action did not start until 2009 so sufficient and reasonable time for notice had passed for the licence to be withdrawn.
The defendants' second argument challenged the validity of the mark based upon absolute grounds for refusal and non-use for five years. The judge rejected the argument that the claimant had not used the mark and was simply holding off use of the mark until the Scottish football team became more successful given that it the claimant's had used the mark intermittently.
Even though the defendants' arguments were largely rejected, the judge held in their favour on the grounds that there was no infringement or passing off. The judge found that the marks were not identical due to the use of 'Famous' by the defendants which was more than just a descriptor. With regards to the passing off claim, the judge held that there was no likelihood or evidence of confusion from the public which could substantiate the claim.
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