The Trade Marks Act 1994 provides for a number of defences in response to an action for trade mark infringement, the following article provides an insight into the types of defence that may be available to a potential defendant.
A mark has not been validly registered
Under s47 of the TMA 1994, a defendant may argue that a trade mark registration is invalid as it falls within the absolute grounds for refusal as detailed in s3 of the TMA 1994.
Descriptions of characteristics of goods and services
Under s11 (2)(b) TMA 1994 a owner of a registered mark cannot stop third parties from using descriptions concerning good and services that relate to the kind, quality, quantity, intended purpose, geographical origin, value or the time of production of the goods or rendering of the service, including other characteristics, providing that this use by the third parties is in relation to honest practices in industrial or commercial matters.
Use of ‘own name’
Under s11(2)(a) TMA 1994 a owner of a registered mark cannot stop a third party from using their own name however this is subject to the proviso of honest practices as mentioned above.
Indications regarding the intended purpose of goods or services
This defence is similar to two above, according to s11(2)(c) TMA 1994 there is a defence where it is essential to indicate the intended purpose of goods or services, this defence is again subject to the use being in accordance with honest practices in commercial and industrial matters.
Use of an earlier right
According to s 11(3) of the TMA 1994, a mark is not infringed by the use in the course of trade, (in a certain locality) of an earlier right. There are again a number of requirements that must be met in order for this defence to apply.
Received notification demanding you stop using a certain mark or name? Maybe one of the above applies to you? We can help.