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It is quite a common and perfectly reasonable assumption by some clients that by registering a trade mark you acquire an automatic right to use that trade mark or that your use is protected by your registration. However this assumption is not totally correct.

This article provides a simplified summary and a brief overview of statutory defences available in a trade mark claim in the UK. The whole area of defences and counterclaims is very complex, and is very dependent upon the precise circumstances of the case, so this article is simply illustrative of the kind of defences that are theoretically available in the UK.

Defence or counterclaim?

A defence is a statutory mechanism that can be used to respond to a claim and to provide a shield to the defendant. There are highly likely to be arguments as to whether the defendant can validly rely on the defence(s), but the existence of the defence is explicitly acknowledged. 

A counterclaim is not a defence per se, since it does not shield the defendant but rather is used to attack, erode and perhaps remove the right upon which the claimant relies. This article does not look at counterclaims in any detail, but the most commonly used counterclaim in trade mark cases would be a claim that the earlier mark was not validly registered initially, or has become invalidly registered over time, or that the earlier registered trade mark has not been used sufficiently or at all (although see also “the non-use defence” below).

As mentioned above, this article looks only at statutory defences in brief, and does not cover other common law defences that may be available in the UK.

Defences

The “Registration” defence

Section 11(1), (1A) and (1B) of the UK Trade Marks Act 1994 (as amended) still contains a nominal defence to the effect that a later registered trade mark cannot infringe an earlier registered trade mark. However the wording of the law was amended in 2018 to make it very clear that such a defence only applies where the later trade mark would not be declared invalid.

This brought the UK law directly into line with Article 16 of the EU TM Regulation ((EU 2017/1001).

In reality, this change did not bring about a substantial difference in approach, since the registration defence always relied upon an assumption that the later trade mark was registered validly. However the changes to the law reinforced and clarified this link.

The “Use” defence

Use of an unregistered right that predates a later registered trade mark will not infringe that registration (Section 11(3)). In particular this defence is aimed at the protection of the use of unregistered rights that have acquired “passing off” rights.

It should be noted that this defence does not apply to unregistered rights that may have been acquired after the date of the registered trade mark.

Continuous peaceful use of the later mark might well be relevant to a counterclaim on the basis of invalidity, or may well be used in arguments to show lack of likelihood of confusion, but use subsequent to registration of the earlier mark does not provide any statutory defence (even if the use predated use of the earlier registration).

The “Acquiescence” defence

If the owner of the earlier registered right can be shown (Section 48(1)) to have been aware of the use of the later mark and to have effectively consented to that use for 5 years, they are no longer entitled to oppose that use. It links to the “registration” defence, because the later mark has to be registered for this defence to apply.  

The primary difficulty here for a defendant is to prove that the owner of the earlier right knew of the use over the 5 year period. It would not be sufficient to prove that the owner knew of the later registration, but it must be proved that they knew that the registration was being used.

The “Non-use” defence

I mention above the non-use counterclaim option, but the UK law also includes a specific non-use defence, which operates independently of a counterclaim for non-use. Section 11A(1-3) makes it a specific defence to infringement if the owner of the earlier registered right is unable to prove use of that mark, if requested by the defendant.

It is unlikely that this defence would be run without also making a counterclaim for non-use, as the cancellation serves to increase the pressure on the claimant by placing their registration at risk. The defence option does not threaten the registration, but only serves to shield the defendant from the claim based on that registration.  

The “Exhaustion of rights” defence 

Once the trade mark owner has placed goods bearing the earlier trade mark on the market, their right to oppose subsequent use by third parties of the trade mark for those goods becomes limited (Section 12(1) and (2)). The trade mark owner can only object if there legitimate reasons to do so, perhaps if the condition of the goods has been altered or impaired.

This article is written in the run up to departure of the UK from the EU, so changes are likely, but currently the trade mark owner’s rights are exhausted once the goods are put on the market within the European Economic Area.

The “own name” defence

An individual is entitled to use his own name or address without infringing a registered trade mark (Section 11(2)(a)). This defence has been used a number of times in cases involving the names of designers, who no longer own the registered trade mark that features their own name.

The “non-distinctive/descriptive” defence

A registered trade mark is not infringed by use of a non-distinctive term, or a term which describes some characteristic of the goods (Section 11(2)(b)). 

Some care must be taken in using this defence, since the manner of use of the term by the defendant is crucial. For example, if the defendant has been using the alleged non-distinctive or descriptive term as a trade mark, then this may well erode their ability to rely on this defence. This defence is intended to shield genuine descriptive use of a generic term, for example.

The “spare parts” defence

The owner of a registered trade mark is not entitled to sue for infringement if third parties are using that trade mark to refer to or identify the owner’s goods or services (Section 11(2)(c)). So, use of a registered mark to indicate that parts or accessories are suitable for that third party product is allowable, and is specifically protected by virtue of this defence. 

The limitation to this defence is that the third party use must be in accordance with honest practices. For example, this means that care must be taken not to imply a formal connection with the earlier trade mark owner, and that the use of the earlier mark is accurate and fair.

Conclusion

The answer to the question posed in the title of this article is “No, not really”. There are limitations to all the defences, and the owner of the earlier registration still has the upper hand from the outset.

However use and/or registration of a later trade mark can, in some circumstances, generate statutory defences that can be successfully pleaded. The onus is firmly on the defendant to prove to the court that they can validly rely on those defences, and that can mean that there is a significant evidential burden on the defendant. As a result they should not be viewed as a simple panacea to fight off any infringement claim, but they perform an important function in providing a check and balance to the fairly broad enforcement rights available to a registered trade mark owner.

Edmund specialises in trade mark work, dealing with a wide range of issues including prosecution of applications, opposition, revocation and invalidity actions in the UK and EUIPO, and internationally outside the EU. He has extensive experience of managing international portfolios of trade marks for multinational companies, as well as smaller companies or individuals. He is highly experienced in negotiating and concluding settlement agreements and in conducting hearings and appeals before the UKIPO. Edmund has also taken cases to the European Court of First Instance and has successfully reclaimed domain names for clients using Domain Name Dispute Resolution Proceedings.
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