Sorry to be obscure, but...

I'm trying to track down a case where a genuine trademarked item, bearing a genuine trademark, was changed in it's appearance presumably to increase it's value. The trademark remained thereon. I believe the decision was that there was an offence under the Trademarks Act on the basis that the article was, by virtue of the changes made to it, no longer what the company owning the trademark produced. The changes resulted in an article that they never have produced, and never would produce. Naturally, I can't find it now I need it. Any help on this instance would be welcome.

I should add that offences unther the Fraud Act and the Consumer Protection Regs are under consideration, but I particularly need to find this case in respect of the Trademarks Act.

Is this the case you were looking for:

 

Arsenal Football Club Plc v Reed [2003] EWCA Civ 696 (21 May 2003) Arsenal Football Club Plc (Arsenal) started proceedings against the respondent in which they alleged that he had infringed certain of their registered trade marks and had carried out acts of passing off. The judge in his first judgment, handed down on 6th April 2001, held that the allegations of passing off had not been established. The judge went on to conclude that the defence raised an issue of construction of the Trade Mark Directive (89/104/EEC) which could not be decided without a reference to the European Court of Justice (ECJ). He therefore referred the following questions to the ECJ.

"1. Where a trade mark is validly registered and (a) a third party uses in the course of trade a sign identical with that trade mark in relation to goods which are identical with those for which the trade mark is registered; and (b) the third party has no defence to infringement by virtue of Article 6(1) of the Directive;

does the third party have a defence to infringement on the ground that the use complained of does not indicate trade origin (i.e. a connection in the course of trade between the goods and the trade mark proprietor)?

2. If so, is the fact that the use in question would be perceived as a badge of support, loyalty or affiliation to the trade mark proprietor a sufficient connection?"

Held: Order: Appeal allowed; respondent's notice dismissed; judge's order so far as it relates to infringement of trade mark should be set aside

 

 

Thanks Ron. I do have that one, but i'm looking for something a little more obscure. The query is that the original item is a genuine product of the trademark holder, with a genuine trademark thereon, which is not the case with the above.

 

What has happened is that the 'culprit' for lack of a better work, has embellished the original in an effort to give the impression that it is a higher grade of item, in order to get a better price when it's sold. The trademark is still present.

 

My view is that a trademark is an indication of origin and quality, a view confirmed in the Arsenal case, and repeated in many others (Johnson for instance) The product being sold is adulterated, and is not something the trademark holder would ever produce. As it's being presented with the embellishments unstated, it is not, IMO, a genuine item as produced originally, notwithstanding it's genuine origins. If I'm correct, then the trademark is a false representation of origins and quality.

 

The Trademarks Act mentions marks identical to, or likely to be mistaken for a trademark. A genuine trademark is obviously identical. The act could have specified a false trademark, but didn't, so I'm inclined to think it's a runner. I'm still of a mind that I have seen a case that is pretty specific to this situation, but I'm damned if I can find it now.

 

All hints gratefully received (Other than 'take your hat off and mingle with the crowd')