Scottish football magazine cleared of ‘Tartan Army’ infringement

A Scotland-based football magazine has been cleared of infringing trademarks for ‘Tartan Army’, a name given to fans of the Scotland national football team.

Lord Glennie, principal commercial judge in the Court of Session in Edinburgh, ruled in favour of The Famous Tartan Army Magazine on Friday, February 10.

Tartan Army, which owns EU and UK trademark rights for ‘Tartan Army’, sued Alba Football Fans for   infringing its trademarks via the publication The Famous Tartan Army Magazine, as well as passing off.

The company asked for an order prohibiting Alba from infringing its rights, for destruction of all products and promotional material, and for expenses.

Alba counterclaimed and sought a declaration that Tartan Army’s UK and EU trademarks are invalid.

Robert Shields and Don Lawson own Tartan Army.

According to the ruling, Shields and Lawson incorporated two companies, Tartan Army Merchandising Limited and Tartan Army Direct Limited, in order to develop and market Tartan Army merchandise, in particular a Tartan Army clothing line.

They sold their merchandise online and in retailer Debenhams. Due to insufficient sales, Tartan Army Merchandising Limited dissolved in 2009.

Assessing trademark infringement, Glennie said that “I would accept that the marks are similar and that the goods or services are identical or similar.

“But infringement … requires there to be a likelihood of confusion on the part of the public from the use of the defender’s sign alongside that of the pursuer [Tartan Army], which may include the likelihood of association of the defender’s sign with the pursuer’s trademark.

“I do not find this established. The evidence does not suggest that anyone becoming aware of the magazine would associate it with the pursuer 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.”

Glennie added: “The wording of the magazine title is such as to direct attention to the famous tartan army, the ‘disorganisation’ of Scotland football fans, and to hold the magazine out as a magazine belonging to the fans.

“It does not point naturally to an association with the pursuer. The attempt to establish infringement … therefore fails.”

Rejecting the passing off claim too, he said: “I do not accept that there is any misrepresentation on the part of the defender in publishing the magazine under the title The Famous Tartan Army Magazine or in promoting travel services for football supporters under that name.”

However, Glennie ruled that the trademarks were not invalid, as claimed by Alba.

The judgment is available in full here.

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