Trade Marks and Brands

Trade Marks 3
Infringement and defences
Aims and objectives
The aim of this seminar is to assess the rules relating to
infringement, revocation, and defences to trade mark
infringement. By the end of the preparation for, and participation
in the seminar for this topic, you should be able to:
• Identify the way in which the relative grounds for refusal
overlap with infringement;
• Analyse the main defences to trade mark infringement
including honest practices on context of use of own name,
descriptive use and indication of purpose of goods;
• Discuss the economic, social, and cultural implications of the
scope of trade mark rules on infringement and defences to
infringement.
Overview
1. Infringement [mirrors relative grounds for refusal]
2. Revocation and invalidity
3. Defences
Infringement and trade mark functions
How has the use (in the course of trade) affected the
function(s) of the earlier mark?

Potential damage to:

• Origin
• Quality
• Advertising
• Investment
• Communication?
Overview – infringement and defences
s. 6 – meaning of ‘earlier TM’
s. 7 TMA (relative grounds and concurrent use)
s. 9 – rights conferred by registered TM
s. 10 – infringement
s. 11 TMA; Art. 14 TMR (limitations)
s. 14(2) TMA (remedies for infringement)
s. 46 TMA ; Art. 58 TMR (revocation)
Overview – exclusive rights
s. 9(1) TMA
The proprietor of a registered trade mark has exclusive rights
in the trade mark which are infringed by use of the trade mark
in the United Kingdom without his [their] consent.
Overview – infringement – use
s. 9(1) TMA
The proprietor of a registered trade mark has exclusive rights
in the trade mark which are infringed by use of the trade mark
in the United Kingdom without his [their] consent.

s. 10 (infringement) = USE OF THE RELEVANT KIND + IN

THE COURSE OF TRADE
Overview – infringement – use
s. 10 TMA summary
Use of the relevant kind is use of:
• Identical sign + identical class
• Identical sign + similar class + likelihood of confusion
• Similar sign + similar class + likelihood of confusion
• Identical or similar sign to TM with a reputation + (takes
unfair advantage of, or is detrimental to, the distinctive
character or the repute of the trade mark) - due cause
Overview – infringement – use
s. 10(4) TMA summary
Types of use of sign:
• Affixing to goods or packaging
• Offers goods for sale
• Import or export of goods
• Company name
• Advertising or business papers
• Comparative advertising that is misleading
Infringement – meaning of ‘use’
Arsenal v Reed Case C-206/01 [2002] ECR I-10273 at [56]

“[T]he use of the sign is such as to create the impression that

there is a material link in the course of trade between the
goods concerned and the trade mark proprietor.”
Infringement – meaning of ‘use’
See also Arsenal v Reed (No 2) [2003] UKHL 28 per Aldous
J:

“[T]he ECJ is not concerned with whether the use complained

about is trade mark use. The consideration is whether the
third party’s use affects or is likely to affect the functions of a
trade mark.”
Infringement – meaning of ‘use’
Adam Opel AG v Autec AG Case C-48/05 [2007] ECR I-1017

Trade marks and toy cars: is a TM on a toy ‘use’?

Defender response – invalidity
• Use of invalidity process as a ‘sword’

• May seek a declaration of invalidity based on an earlier

mark: s. 47 TMA (grounds for invalidity of registration)
• A mark may also be declared invalid based absolute
grounds for refusal
Defender response – revocation s. 46 TMA
• Genuine use is public use – e.g. does guarantee origin?
• Also: has the mark become generic?

Grounds:
• Non-use
• Suspension
• Generic
• Deceptive

Link to TM functions
Defender response – specific defences
• Individual use of name or address,
• Or, non-distinctive or e.g. descriptive use
Both: in accordance with honest practices
Defences
• Individual use of name or address,
• Or, non-distinctive or e.g. descriptive use
Both: in accordance with honest practices

The ‘use’ is of an existing sign i.e. an “earlier right”

• Separately: non-use by TM proprietor (s. 11A TMA)

Earlier right
s.11(3) TMA
…“earlier right” means an unregistered trade mark or other
sign continuously used in relation to goods or services by a
person or a predecessor in title of his from a date prior to

[…] and an earlier right shall be regarded as applying in a

locality if, or to the extent that, its use in that locality is
protected by virtue of any rule of law (in particular, the law of
passing off).
Earlier right
• The relevance of location

s. 11(3) TMA
A registered trade mark is not infringed by the use in the
course of trade in a particular locality of an earlier right
which applies only in that locality.
Defences – types of ‘use’
s. 11(2) TMA: A registered trade mark is not infringed by—
(a) the use by an individual of his own name or address,
…

This is a post EUTMR change from the previous law which

referred to ‘a person’.
Defences
Art. 14 EUTMR
1. An EU trade mark shall not entitle the proprietor to prohibit a
third party from using, in the course of trade:
a) the name or address of the third party, where that third party is
a natural person;
…
Defences – types of ‘use’
s. 11(2) TMA: A registered trade mark is not infringed by—
…
(b) the use of signs or indications which are not
distinctive or which concern 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, or
(c) […] where that use is necessary to indicate the intended
purpose of a product or service (in particular, as accessories
or spare parts),
provided the use is in accordance with honest practices in
industrial or commercial matters.
Defences – honest practices
Gerolsteiner Brunnen GmbH v Putsh GmbH Case C-100/02
[2004] RPC 39 at [25]

“The mere fact that there exists a likelihood of aural

confusion between a word mark registered in one Member
State and an indication of geographical origin from another
Member State is therefore insufficient to conclude that the
use of that indication in the course of trade is not in
accordance with honest practices.”
Defences – honest practices
Gillette Company v LA-Laboratories Oy Case C-228/03
[2005] All ER (EC) 940
Defences – honest practices
Aktieboloaget Volvo v Heritage (Leicester) Ltd [2000] FSR
253

INDEPENDENT VOLVO DEALER

Defences – honest practices
Sky Plc v Skykick UK Ltd [2017] EWHC 1769 (Ch);
[2018] FSR 2

• Challenging trade mark rule change limiting own name defence

to natural persons on basis contrary to EU fundamental rights.
• No preliminary reference made.
Defences and bad faith
Sky v Skykick [2018] EWHC 155 (Ch) at [328] :

First, the requirement to act in accordance with honest

practices in industrial or commercial matters
"constitutes in substance the expression of a duty to
act fairly in relation to the legitimate interests of the trade
mark proprietor": […cases…]
Defences – honest practices and own name
Céline Celine Sarl v Céline SA Case C-17/06 [2007] ETMR
80

“[T]he unauthorised use by a third party of a company name,

trade name or shop name which is identical to an earlier mark in
connection with the marketing of goods which are identical to those
in relation to which that mark was registered constitutes use which
the proprietor of that mark is entitled to prevent in accordance with
Art.5(1)(a) of the Directive, where the use is in relation to goods in
such a way as to affect or be liable to affect the functions of the
mark.”
Defences – honest practices and own name
Hotel Cipriani v Cipriani (Grosvenor Street) [2010] EWCA Civ
110 at [68]-[69]:
“In Reed Executive plc v Reed Business Information Ltd […]:
"Any fear that dishonest people might form companies
with misleading names so as to take advantage of
the defence is easily removed by the use of the
proviso - such a deliberate attempt to avail oneself of
another's mark would not be an honest practice".
That confirms my view that the mischief of a misleading
name, whether a corporate name or a trade name, is to be
dealt with by reference to the proviso, not by a rigid rule that
a trade name cannot be an "own name" for this purpose.”
Defences – non use by TM proprietor
s. 11A(3) TMA
If the defendant so requests, the proprietor of the trade mark
must furnish proof—
(a) that during the five-year period preceding the date the
action for infringement is brought, the trade mark has been
put to genuine use in the United Kingdom by or with the
consent of the proprietor in relation to the goods and services
for which it is registered and which are cited as justification
for the action, or
(b) that there are proper reasons for non-use.
Infringement and defences: example
Maier v ASOS [2015] EWCA Civ 220

Classes: incl. 25 (clothing)

Infringement and defences: example
Maier v ASOS [2015] EWCA Civ 220
• ASSOSS alleged
– Use of similar mark without due cause which would cause
confusion
– Unfair advantage taken of mark
– ASOS mark invalidly registered
• ASOS responded
– Even if there was infringement there was no confusion
– Honest use of their sign
– Own name defence
– Goodwill exists in their sign
Infringement and defences: example
Maier v ASOS [2015] EWCA Civ 220

• Held at first instance:

– Not TM infringement
– Not passing off

• Appeal grounds:
– TM specification should not have been restricted to specialist
cycling clothing
Infringement and defences: example
Maier v ASOS [2015] EWCA Civ 220

Held on appeal:
• TM infringement because there was likelihood of confusion
between ASSOS and ASOS
• TM specification was broader than ‘specialist clothing for
racing cyclists’, therefore specification broadened
• But… defence of own name made out

Note also that there was a dissenting judgment.

To what extent does
the outcome reflect
the trade mark
Maier v ASOS [2015]
functions and the EWCA Civ 220
rationales for trade
mark protection?
Revocation example
Budejovicky Budvar Narodni Podnik v Anheuser-Busch Inc
[2012] EWCA Civ 880
Infringement – remedies
The same as for any property right infringements (s. 14(2)
TMA)
For example:
• Damages
• Injunction [interdict]
Infringement – remedies
The same as for any property right infringements (s. 14(2)
TMA)
For example:
• Damages
• Injunction [interdict]
And specific orders (s. 15 TMA)
• Removal of sign from infringing goods
• Or, destruction if that isn’t practicable
• And, if non-compliance likely, delivery up for removal, or
destruction
• Delivery up to TM proprietor (s. 16 TMA)
Quick coursework

To what extent does the concept of ‘due cause’ serve as a

brake on trade mark ownership?

Discuss by reference to: Ilanah Fhima. “Due cause” (2017)

Journal of Intellectual Property Law & Practice 12(11): 897–
905.

Write an outline only.