Trade Marks

Defences

Jane Lambert
14 August 2005

Essentially there are three sets of defences to an infringement claim:

	neither s.10 (1), (2) nor (3) of the Trade Marks Act 1994 applies or in the case of a CTM none of the sub-paragraphs of art 9 (1) of the CTM Regulation applies;
	one of the exceptions to the rights granted by s.9 of the 1994 Act or art 9 of the CTM regulation applies;
	exhaustion of rights, or
	the registration is invalid or revocable.

No Infringement

The obvious defence to a claim based on identical signs and identical goods is that the goods or signs are not identical. The requirement of identity is very strict. In the words of the European Court in C-291/00 ARTHUR the requirement

"must be interpreted as meaning that a sign is identical with the trade mark where it reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer."

The defence to a claim based on the similarity of signs and goods is that the similarity is not such as to create a likelihood of confusion on the part of the public including a likelihood of association between the sign and trade mark. The ECJ has made clear in a succession of cases that the question is to be considered globally, taking account of all relevant factors relevant to the circumstances of the case. In those cases, the court has set out several guidelines as to how the appreciation is to be conducted. A claim based on detriment or unfair advantage can be defeated by challenging an assertion that the claimant's mark has a reputation, the public are reminded of the reputable mark by the defendant's sign or that such connotation takes unfair advantage of or damages the reputable mark (see Daimlerchysler AG v. Alavi [2000] EWHC Ch 37).

Exceptions
Both the Trade Marks Act 1994 and CTM Regulation provide a number of statutory defences.

So far as UK trade marks are concerned, s.10 (6) of the 1994 Act permits references to a registered trade mark to identify a supplier of goods or services. In contrast to the previous legislation, this provision would permit comparative advertising. But it is conditional upon being in accordance with honest practices in industrial and commercial matters. The exception is not available where  such use would take unfair advantage of, or be detrimental to, the distinctive character or repute of the trade mark without due cause.

S.11 (1) provides that a registered trade mark is not infringed by the use of another registered trade mark in relation to goods or services for which the latter mark is registered. However, one of the grounds upon which a mark can be declared invalid is that that there is an earlier trade mark unless the owner of the earlier mark consents to the registration and use of the latter one (s.47 (2) (a)). If the latter mark is declared invalid, s.47 (6) requires its registration to be deemed never to have been made.

A third exception is that s.11 (2) excepts the use by a person of his or her own name or address (s.11 (2) (a)), use of indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services (s.11 (2) (b)) and the use of the trade mark where it is necessary to indicate the intended purpose of a product or service, in particular, as accessories or spare parts (s.11 (2) (c)). However, all such uses must accord with honest practices in industrial or commercial matters.

Finally, s.11 (3) excepts the use in the course of trade in a particular locality of an earlier right which applies only in that locality. The right in question is the right to use an unregistered trade mark which can be enforced by an action for passing off.

Art 12 of the CTM regulation provides exceptions corresponding to those provided by s.11(2),namely

	use of one's own name or address,
	indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of the goods or of rendering of the service, or other characteristics of the goods or service and
	references to a trade mark where it is necessary to indicate the intended purpose of a product or service, such as accessories or spare parts.

Exhaustion of Rights

Both s.12 (1) of the Act and art 13 of the CTM Regulation provide that a registered trade mark or CTM is not infringed by the use of the trade mark in relation to goods which have been put on the market in the European Economic Area under that trade mark by the proprietor or with his consent. There is, however. an exception to that rule. The section does not apply if there are legitimate reasons for the proprietor to oppose further dealings in the goods. One instance, would be  where the condition of the goods has been changed or impaired after they have been put on the market.

Invalidity

A trade mark may be declared invalid if it should never have been registered under either the absolute or relative grounds of refusal. If a case for invalidity is made on absolute grounds, s.47 (1) provides that a trade mark shall not be declared invalid under s.3 (1)(b), (c) or (d) if, in consequence of the use which has been made of the mark after registration it has acquired a distinctive character in relation to its specified goods or services. If the case is made on relative grounds  it is now necessary to prove use of the earlier right or mark by virtue of s.47 (2A) to (2E) of the Act which were inserted by the The Trade Marks (Proof of Use, etc.) Regulations 2004.

Important  

Articles
Jane Lambert The Trade Marks Act 1994
Jane Lambert The Trade Marks Rules 2000
3 May 2000

Jane Lambert Community Trade Marks
9 April 2003