TM Action Defences

Table of Contents

Defences

The use of a valid trade mark in relation to goods and services covered by them is a defence to infringement proceedings. Accordingly, a registered trade mark shall not be infringed by using another registered trade mark in relation to goods or services for which the latter is registered. This defence would not be available if the registration as a trademark is invalidated.

Own Name

A registered trade mark is not infringed by the use of the name or address of a third party, where that third party is a natural person; Use must be in accordance with honest practices in industrial and commercial matters. The defence is not available to a company using its own name. The practice would, in any event, have to be honest so that the defence is unlikely to be available if there is prior knowledge of an inconsistent trademark.

Non-Distinct or Descriptive

A registered trade mark shall not be infringed by the use of signs or indications which are not distinctive or which concern the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service or other characteristics of goods or services; The use must be in accordance with honest practice, in industrial and commercial matters. What is permitted is the use of the indication, not the use of the trademark as such.

A registered trade mark is not infringed by the use of the trade mark for the purpose of identifying or referring to goods or services as those of the owner of that trade mark, in particular where that use is necessary to indicate the intended purpose of a product or service, in particular, as accessories or spare parts: provided that such use is in the course of trade in accordance with honest practices in industrial and commercial. A third party repairing or maintaining the goods may use the mark in this context, provided that it does not suggest a connection with the owner’s network.

Earlier Right in Locality

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. The extent of the locality concerned is unclear. The prior use must have been continuous.

An earlier right means an unregistered trade mark or other sign continuously used in relation to goods or services by, or by a predecessor in title of, a person from a date prior to whichever is the earlier of the use of the first-mentioned trade mark in relation to those goods or services by the owner or a predecessor in title; and the registration of the first-mentioned trade mark in respect of those goods or services in the name of the owner or a predecessor. The earlier right is regarded as applying in a locality if, or to the extent that, its use in that locality is protected by any rule of law, in particular, the law of passing off.

On the EU Market Lawfully

An owner may rely on his trademark to take infringement action in breach of national legislation. This may be the case even though the trademark is lawfully used in other EU countries. However, if a license is given to a party in another EU State, he may not prohibit that third party from exporting into his State. The principle does not apply where the goods have been changed or where the markings have been interfered with.

In common with other intellectual property rights, where goods and services are lawfully put on the market in one country, they are generally entitled to be circulated throughout the European Union. There are limited grounds upon which States can prohibit the operation of this principle, including the protection of intellectual property rights. However, this exception must not constitute a disguised restriction.

A registered trade mark is not infringed by the use of the trade mark in relation to goods which have been put on the market in the European Economic Area (EU +3) under that trade mark by the owner of the trade mark or with its consent. This does not apply where there exist legitimate reasons for the owner of the trade mark to oppose further dealings in the goods, in particular, where the condition of the goods has been changed or impaired after they have been put on the market.

Legitimate Honest Use

Use for the purpose of identifying goods and services of the trademark holder, which does not take unfair advantage of and is not detrimental to the distinctive character or reputation of the trademark, is permissible. Any such use, otherwise than in accordance with honest practices in industrial or commercial matters, shall be treated as infringing the registered trade mark if the use without due cause takes unfair advantage of, or is detrimental to, the distinctive character or reputation of the trade mark.

This defence may be available in the context of highlighting the compatibility of products and their suitability as accessories and spare parts. It also permits comparative advertising, provided that it is honest.

A trader continues to have a legitimate interest in relation to these matters. The importer may be entitled to make minimal changes to the get-up of the goods, which are necessary to enable marketing in the importing state.

The legislation at the EU and Irish level considers the legitimate interest of the mark holder as against the needs of persons in the retail and distribution chain in marketing the goods in the course of trade. The parallel importing principle applies only to the extent necessary to prevent a disguised partitioning of the market and restriction on trade.

Registration of a trademark does not limit another parties rights in respect of passing off.

Five Year Use

Where the owner of a prior trademark or right has acquiesced in the use of a later trademark for five years, there is a defence available to the later user of the mark. The invalidity of later registration cannot be challenged, nor is it possible to oppose the continued use of the goods and services concerned. Each trademark holder must effectively tolerate the other.

If within a period of 5 years following the date of the completion of the registration procedure, the owner has not put the trade mark to genuine use in the State in connection with the goods or services in respect of which it is registered, or if such use has been suspended during a continuous 5 year period, the trade mark may be subject to limitation and revocation unless there are proper reasons for nonuse.

With regard to trade marks registered under international arrangements and having effect in the State, the 5 year period shall be calculated from the date when the mark can no longer be rejected or opposed, or where an opposition has been lodged or when an objection on absolute or relative grounds has been notified, from the date when a decision terminating the opposition proceedings or a ruling on absolute or relative grounds for refusal became final, or the opposition was withdrawn.

The owner of a trade mark shall be entitled to prohibit the use of a sign only to the extent that the owner’s rights are not liable to be revoked pursuant to an action for infringement. If the defendant so requests, the owner of the trade mark shall furnish proof that, during the 5 year period preceding the date of bringing the action for infringement

the trade mark has been put to genuine use in connection with the goods or services in respect of which it is registered and which are cited as justification for the action, or
that there are proper reasons for non-use, provided that the registration procedure of the trade mark has, at the date of bringing the action, been completed for not less than 5 years.

Later EU TM Would be Valid

In an action for infringement, the owner of a trade mark shall not be entitled to prohibit the use of a later registered European Union trade mark where that later trade mark would not be declared invalid pursuant to the European Union trade mark regulation. Where the owner of a trade mark is not entitled to prohibit the use of a later registered trade mark the owner of that later registered trade mark shall not be entitled to prohibit the use of the earlier trade mark in an action for infringement.

The use shall include the use of the trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark as used is also registered in the name of the owner, or affixing of the trade mark to goods or to the packaging thereof in the State solely for export purposes. Use of the trade mark with the consent of the owner shall be deemed to constitute use by the owner.

Disclaiming Aspects

The applicant may disclaim or limit where certain aspects or elements may not be fully distinctive. A limitation may be agreed upon whereby the trademark might have agreed to be used only in the State or part of the State in order to assist in distinctiveness. Where the registration of a trade mark is subject to a disclaimer or limitation, the rights conferred shall be restricted accordingly.

If, on an application for the registration of a trade mark, it appears to the Controller that any particular element of the trade mark is not distinctive and the inclusion of the element in the trade mark could give rise to doubts as to the scope of protection of the trade mark, he may refuse to accept the application unless the applicant agrees to make a disclaimer in respect of that element within such period as the Controller may specify.

Particulars of any disclaimer or limitation shall be entered in the register.