Defences to Trademark Infringement

The Trade Marks Act 1994 (TMA 1994) specifies the various infringements which can be made in relation to registered trademarks, and how these infringements can be established. The same Act however, also establishes various defences to trademark infringement.
Under s 11 of TMA 1994, the defences available to an action for trademark infringement include the use of:

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

Use of another registered trademark

If another person has registered another trademark in relation to the same goods and services as an already existing trademark, 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, 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

Where it is necessary to use a mark to indicate the intended purpose of goods or services, 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.

Use of an earlier mark

There shall be no infringement 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, 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.

Article written by...
Nicola Laver LLB
Nicola Laver LLB

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A non-practising solicitor, Nicola is also a fully qualified journalist. For the past 20 years, she has worked as a legal journalist, editor and author.