Defences to Trademark Infringement

Are there any defences which are available for trademark infringement?

The Trade Marks Act 1994

The Trade Marks Act 1994 specifies certain infringements, and how to establish these infringements, which can be undertaken in relation to registered trademarks. The same Act however, also establishes various defences to trademark infringement.

Accordingly the protection offered to registered trademarks is comparatively weaker than the protection afforded by various other Intellectual Property Rights.

Defences to trademark infringement

The Trade Mark Act 1994 specifies the following defences to trademark infringement:

  • Use of another registered trademark
  • Use of own name and address
  • Use of certain indications
  • Use of intended purpose
  • The use of an earlier mark  

Use of another registered trademark

If another person has in fact registered another trademark in relation to the same goods and services as an already existing trademark then there will be no trademark infringement.

The only option available here would be to argue that the initial registration of the new mark is in fact invalid. The grounds for this would be that it is identical or similar to an already existing mark and that it will create confusion in the minds of the general public. For further information see the article on refusal of trade marks.

Use of own name and address

If a company uses their name and address as a trademark then this will not be seen as trademark infringement. There is a qualification, however, that the use of their name and address must be in accordance with honest practice. Accordingly the name must be one by which they are ordinarily known.

Use of certain indications

If another uses certain indications such as the kind of goods or services, the quality and quantity of the goods or services, the value or geographical origin of the goods or services then this will not constitute an infringement of a registered trademark. Again this must be done in accordance with honest practice.

Use of Intended Purpose

In a situation where it is necessary to use a mark to indicate the intended purpose of goods or services then there will be no infringement of a registered trademark. As is the case with the other above defences this must be in accordance with honest practice.

The use of an earlier mark  

There shall be no i nfringement of a registered trademark where there has been use of an earlier right in the course of trade in a certain area. When the act talks of an earlier right it means the use of an unregistered trademark.

Accordingly if a trademark is registered in the European Economic Area then any use of a similar or identical mark will attract a claim for infringement. However, within this area if there has been use of an unregistered trademark prior to your registration and further exploitation of your mark then you will not be able to claim for infringement against that earlier mark.