The Paris Tribunal de grande instance recently found two online bookmaker’s use of the word ‘Juventus’ involved more than just identifying the club on which bets were to be taken and constituted advertising, therefore infringing Juventus football club’s trademark. Mark Miller and Sophie Guerrieri of Hammonds Hausmann set out the background to this case and explain its possible implications.
The French decision in Juventus
The famous Italian football club Juventus FC brought a claim for trade mark infringement against Unibet Ltd (operating under the name of “Mr Bookmaker.com Ltd”) and William Hill Credit Ltd. JUVENTUS is a registered trade mark in France and the European Community, the protection for which includes class 41 (covering the services of gambling and gaming).
Juventus FC argued that the defendants were infringing its trade mark by reproducing it without its permission. The French Intellectual Property Code, in line with the EU Directive harmonising trade mark law sets out a list of actions that third parties are prohibited from undertaking unless expressly authorised by the owner, including the use of an identical mark for identical goods and services, or the use of a similar mark for identical or similar goods or services where there exists a likelihood of confusion on the part of the public. Since the use of the JUVENTUS mark by Unibet and William Hill was clearly identical to that registered by the club, and was used for services identical to those for which it was protected, the only question was whether the reproduction constituted a “use” of the word “Juventus” in a way that constituted an infringement. William Hill and Unibet both relied upon an exception to the rule on infringement which permits the use of a mark in circumstances where the use is “necessary… for the purposes of indicating the source of the goods or services”.
The use complained about on the William Hill site was as follows:
”Gamble in safety on your favourite sports… This website is complete and updated on a daily basis as regards Juventus…”.
The Unibet site merely contained a piece of editorial text as follows:
“Two Titans of European Football are due to clash on Tuesday evening at 20:45. Real Madrid with their 9 Champions’ League Cups welcome Juventus from Turin and their 6 European Cups…”
The Paris Tribunal de grande instance handed down its decision on 30 January 2008. The Tribunal did not accept the website operators’ line of defence. Whilst the Court reaffirmed the rule that the defendants are in principle entitled to use trade marks to identify the football clubs on which bets may be placed, such use must be limited to uses that are strictly necessary for the activity of online betting . The Tribunal considered that the uses made by William Hill and Unibet went beyond what was strictly necessary to identify the subject of the betting. Essentially, the bookmakers were using the JUVENTUS trade mark as a way to promote their own business activity, by taking an unfair advantage of the fame and prestige of the famous Italian team.
It is certainly true that the use made by William Hill seems to focus on the Juventus name without particular justification. However, it is difficult to see the Court’s reason for attacking the Unibet text, which seems to have consisted merely of some editorial commentary. In past decisions, the Court has recognised that a merely informational use of a trade mark should not be considered to constitute an infringement. Indeed, in a decision of 22 February 1995, the same Court, the Paris Tgi , ruled that the use of a registered trade mark (the name of a TV broadcaster, TF1) just for information purposes by a magazine is not a use that may be considered as promoting the company’s business. Unibet does not seem to have defended the case upon that basis; it would have been interesting to see whether the approach of the Court would have been different had the defendants argued that the website represented a journalistic expression for the information of those who might want to know more about the game and not a commercial usage at all. The idea of limiting what is essentially a right of freedom of speech by preventing Unibet from publishing a comment on the match as part of its website seems a somewhat dangerous precedent and one wonders what the approach of the Court would have been had the defendant been a newspaper accused by the club of benefiting from the sale of advertising space on its back pages as a result of using the JUVENTUS trade mark as part of a headline which had the effect of attracting readers’ attention.
Arsenal v Reed
Elsewhere in Europe, Courts have also wrestled with identifying the edges of infringing behaviour. The widely reported case of Arsenal v Reed laid down the position of the European Court of Justice (“ECJ”) on this issue.
Mr Reed was an individual who sold Arsenal scarves, hats, replica shirts and other football paraphernalia from a stall outside of Arsenal’s home ground. The dispute itself focussed on his sale of scarves, which included the words “Arsenal” in large characters. By so doing, was Mr Reed making use of the football club’s name “in a trade mark sense”? Mr Reed argued that the goods were not sold as being those of the trade mark owner, especially as Mr Reed had displayed a notice to this effect on his stall. Mr Reed was successful in his defence before the English Court at first instance, but not so before the ECJ.
The European Court was asked whether a third party using a trade mark (without a licence) could justify this use by invoking the fact that it did not constitute a reference to the origin of the product but merely an indication of support (or allegiance to a club or fan base). The ECJ held that the use made by Mr Reed could lead to confusion in the mind of some consumers, who could interpret the mark affixed on the products as identifying the origin of these products and, hence, believe that they were purchasing goods officially endorsed by the club.
It does not appear that the ECJ’s approach in the Arsenal case troubled the French Courts in its decision in Juventus. Using the name Juventus was clearly not an attempt to trick the customer as to the origin of the goods or services, or to claim an endorsement. Some argue that the nature of the rights in a trade mark are such that they should only be infringed where one can establish harm (in the sense of loss of sales or of reputation). But, the more dominant philosophical approach is to regard the rights conferred by a trade mark as being capable of infringement even where there is no harm or damage. To use a different metaphor, a right of action for trespass lies in the hands of a land owner even in the situation where the trespasser crosses the land without authorisation – whether or not the presence of the trespasser causes any damage. It is that philosophy which held sway in the Tgi.
It is interesting to contrast the decision in the Juventus case with cases also brought before the French Courts on the issue of images used on betting sites. In 2005, the Paris Tgi was asked to consider the use of the images of popular sports stars, such as Zinedine Zidane and David Beckham on betting websites. The Tribunal held that the publication of such images by the defendants was not an association with the betting activity that could be qualified as a commercial promotion of this activity. Therefore, there was no infringement of the players’ personal rights.
On the same facts, the Commercial Court in Liège also found in favour of the gaming operators. However, the part of the claim concerning the alleged infringement of the football clubs’ community trade marks was referred to the Commercial Court in Brussels for further consideration. To the best of the authors’ knowledge, this latter court has not yet handed down a decision.
The judgment in the Juventus case illustrates the ongoing struggles between rights holders and the betting industry to promote their various products. The skirmishes represent not only commercial struggles but a clash of different philosophies about the scope of property rights and the freedom of speech. However, it might also be said that, in the peculiar context in which the French government and society finds itself when dealing with the gambling industry, the decision also manifests an uncomfortable discontentment on the part of the French judiciary, albeit one which it has expressed through the metaphor of trade mark infringement.