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Pre-Class Slides TMB - Trade Marks 3 Infringement and Defences - 2019
Pre-Class Slides TMB - Trade Marks 3 Infringement and Defences - 2019
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?
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
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,
…
• 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