#1688 - Trademark Defences - Intellectual Property Law

Defences

• Use of a registered mark - S.11(1): Registration gives a defence to actions for infringement. Acts as an incentive for traders to apply for TM registration. Where D relies on this, C will usually respond by challenging validity under s.47(6).

• Use of own name and address – S.11(2)(a): A registered TM is not infringed by ‘the use by a person of his own name or address’, in contrast to passing off. Subject to proviso of ‘honest practices’.

The provision applies also to business and company names: Celine Sarl.

• Anheuser-Busch [2004]; ECJ held defence not confined to personal names. Doubt still remains over whether defence will apply to a nickname.

• Hotel Cipriani v. Cipriani (Grosvenor) [2008];

Facts: D opened a restaurant called Cipriani. C sued for TM infringement.

Decision: Held; classic case of double identity. Also held ‘Cipriani London’ infringed. D conceded infringement but argued own name defence. D could not rely on own name defence since neither Cipriani nor Cipriani London was in its own name. Use of Cipriani amounted to unfair competition and could not be justified under the proviso – not in accordance with honest practices. If art.12(a) were to be interpreted as applying to a company’s trading name as opposed to its registered name, it would constitute a substantial inroad into the rights conferred by art.9(1), particularly where the company had only just commenced trading.

• OCH-ZIFF [2010]; Held use of signs not in accordance with honest practises; amounted to unfair practices.

• Descriptive uses – S.11(2)(b): A registered mark is not infringed by the use of 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 services. Again subject to proviso they are used in accordance with honest practices in industrial or commercial matters. Defence limits extent to which a descriptive word can be taken from the public domain.

• Gerolsteiner Brunnen [2004] (GERI/KERRY SPRING);

Facts: C bottled mineral water and registered mark ‘Geri Spring’ in Germany. D marketed soft drinks in Germany as their drinks were made in Ireland from Kerry Spring.

Decision: Held Kerry Spring is being used as a indication of geographical origin. Mere fact of oral confusion does not amount to something not being in line with the proviso.

• Use to indicate the intended purpose of a product or service – S.11(2)(c): A registered mark not infringed by use of the mark ‘where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts’. As before, this is subject to the proviso of use in accordance with honest practices in industrial or commercial matters.

Recognises traders may have a legitimate need to refer to a TM, even though they have no legal or economic link to the TM proprietor, e.g. if the trader sells spare parts for a specific product, or repairs particular brands of goods. Trader will want to inform consumers that parts fit particular products and most efficient way is to refer to TM. If TMOs were able to control such uses it would unfairly restrict trade. Seeks to reconcile the ‘fundamental interests of TM protection with those of the free movement of goods and freedom to provide services’.

• BMW v. Deenik [1999];

Facts: D ran garage repairing and maintaining BMW cars. He was not part of the official BMW dealer network. BMW claimed he made unlawful use of their mark by describing himself as specialising in repair of BMWs.

Decision: ECJ held in the circumstances D could rely on the defence – D could not communicate the fact that he maintained and repaired BMWs without using the mark. Use was necessary to indicate the intended purpose. Said he had to act fairly in relation to the legitimate interest of the TM owner and not suggest a commercial connection.

• Gillette [2005];

Facts: D’s packaging stated ‘all Parason Flexor and Gillette Sensor handles are compatible with this blade’. Gillette argued that this gave the consumer the impression that the third party was licensed to use its trade marks.

Decision: ECJ held third party use of a trade mark is permitted where it constitutes the only means of providing consumers with ‘comprehensible and complete information on the intended purpose of the product’. Necessary when info about the 3^rd parties product cannot be communicated to the public in practice without reference to the TM. Precise circumstances in each case was...