Trade Mark Law (UK) - Defences Flashcards
Under what circumstances does Section 11(1) of the Trade Marks Act 1994 allow the use of a later registered trade mark without infringing an earlier mark?
When the later trade mark cannot be declared invalid under Sections 47(2A), 47(2G), or 48(1).
Explanation: Section 11(1) provides that a later registered trade mark is protected from infringement claims if it would not be declared invalid under the relevant sections addressing invalidity. This rule ensures legal certainty for later registrations.
Under Section 11(2)(b), what is a permissible “descriptive use” of a trade mark?
Indicating qualities or characteristics of the goods or services, such as geographical origin.
Explanation: Use under Section 11(2)(b) refers to descriptive indications used to describe qualities, characteristics, or origins of goods/services in a non-trade-mark capacity.
Which case clarified the requirements for referential use under Section 11(2)(c)?
BMW v. Deenik
Explanation: This case established that using a trade mark to reference a trade origin (e.g., advertising repair services) is permissible as long as it does not imply formal authorization or cause confusion.
The own name and address defence under Section 11(2)(a) is now restricted to which of the following?
Personal names only.
Explanation: After the 2015 Directive, the own-name defence no longer applies to trading names and is limited to personal names.
What must be shown for a defence of “non-use” under Section 11A?
The trade mark has not been genuinely used within five years preceding the claim of infringement.
Explanation: Non-use defence requires the defendant to demonstrate that the trade mark owner has not made genuine commercial use of the mark within the specified time frame.
A registered trade mark is not infringed under Section 11(3) by the use of an earlier, unregistered mark if it has geographical limitations.
True or False
True
Explanation: Section 11(3) protects earlier rights tied specifically to a locality, such as those based on passing off, provided the use aligns with legal geographic limits.
Comparative advertising is never allowed under UK trade mark law.
True or False
False
Explanation: Comparative advertising is permitted under strict conditions, such as objectively comparing features without misleading or tarnishing the competitor’s trade mark reputation.
Honest concurrent use is a direct legal defence against trade mark infringement.
True or False
False
Explanation: Honest concurrent use is not a defence but can be considered as a factor to determine if the likelihood of confusion or trade mark function is adversely affected.
Descriptive use under Section 11(2)(b) requires that the sign not be used as a trade mark.
True
Explanation: The usage must describe the product or service and not function as a trade mark for the user’s goods/services.
The exhaustion of rights principle allows trade mark owners to prevent all resale of their goods within the EEA.
True/False
False
Explanation: The exhaustion principle limits trade mark owners from controlling resale after goods are placed on the market in the EEA, provided certain conditions (like no alteration or legitimate reason to oppose resale) are met.
What are the conditions under Section 11(2)(c) for referential use to be considered lawful?
To lawfully use a trade mark referentially under Section 11(2)(c):
- The use must identify the proprietor’s goods/services.
- It must be necessary to indicate a purpose (e.g., spare parts or accessories).
- The use must align with honest practices without causing confusion or damage to the proprietor’s trade mark.
Explain how earlier rights under Section 11(3) can act as a defence in trade mark disputes.
Earlier rights allow the use of unregistered trade marks or signs limited to a specific locality if their use predates the contested mark.
This provides protection under rules such as the law of passing off, provided the rights are legally recognised and geographically constrained.
What does the Gillette v. LA Laboratories case say about the concept of “honest practices” in trade mark law?
“Honest practices” require that usage be fair concerning the trade mark owner’s legitimate interests. It prohibits actions that create confusion, damage reputation, or imply a commercial link between the parties.
What are the key principles of comparative advertising under Article 14 of the Trade Marks Directive? Include an example case in your response.
Comparative advertising must be truthful, objective, and not misleading. It must not harm the competitor’s trade mark or create confusion.
For instance, in L’Oréal v. Bellure, the misuse of trade marks to promote imitation goods was ruled as taking unfair advantage of a brand’s reputation.
How has post-Brexit law impacted the principle of exhaustion concerning parallel imports?
Parallel imports from the EU to the UK are now permitted without infringement.
However, UK-branded goods exported to the EU are not protected under the EU’s exhaustion rules, limiting the ability to parallel import into the EU post-Brexit.
Discuss whether the restriction of the own name defence to personal names only (post-2019) strikes the right balance between trade mark owners and individuals. Provide arguments for or against.
Arguments for restricting the defence emphasise safeguarding trade mark owners from unfair exploitation by businesses adopting trading names similar to established trade marks.
Opponents argue it places undue limits on individuals operating under legitimate trading names, particularly when no confusion arises or goodwill is harmed.
