31 July 2017TrademarksSimon Chapman and Oliver Fairhurst

Defences to infringement in the EU trademark reforms: a mixed bag

Most of the amended EU trademark regulation came into force on March 23, 2016. The changes were substantive (adding new defences and grounds for invalidity) as well as stylistic (eg, removing the dated references to the “Community”). Now that the dust has settled, this article will focus on some of the more substantial changes to the defences to infringement available to those threatened with legal proceedings.

That’s my name, don’t wear it out

While the changes to the EU trademark regulation introduced several new defences, one of the most eye-catching was the limitation of the “own name defence”. Under the previous regulation, someone trading under a business name that would otherwise infringe a third party’s rights could rely on the fact that it is their own name (whether a company name or a trading name) as a defence to a claim for infringement. This created what many rights owners might consider an oddity, a situation that still exists for the time being in respect of UK trademarks. Under the amended regulation, it is a defence for a person to use their own name only if they are a natural person, i.e. excluding trading and company names from the defence.

This is probably the most important change to the law from an infringement perspective. There have been various cases where businesses have successfully relied on the own name defence, and those cases may very well have gone the other way under the current law. The most famous of these is the Assos v ASOS case, where ASOS successfully relied on the fact that its name was an acronym of As Seen On Screen, which was its original trading name.

While the effect is substantial, all would not be lost for a business such as ASOS. A person who has traded for years using a particular sign that might infringe a registered trademark may still be able to argue that there has been “honest concurrent use”. This was the reason that the brewer Anheuser-Busch, which owns the famous Budweiser brand, failed to prevent the Czech beer brand Budvar using ‘Budweiser’ on its bottles.

Impact rating: 3/5

Referring to trademarks or using them descriptively

Businesses often want to use brands’ trademarks descriptively or to refer to the owner of the mark’s goods or services. For example, a manufacturer once tried to run this defence in proceedings relating to the use of the Opel logo on scale models of cars. Another example is where businesses offer repair services or spare parts for goods such as cars; they often use the trademark to advertise their service or goods.

These defences have been expanded to give a defence where the third party is using the trademark to refer to genuine goods or services. Typically, this defence is employed by businesses offering repair services or spare parts, but there is no reason for the defence to stop there now. For example, in advertising, brands sometimes blur trademarks, or de-badge vehicles. Such precautionary measures may remain sensible (although care should be taken where the advert is being used in certain European territories), but where for example an advertiser features branded products in an advert, there may now be a simpler defence to infringement than existed previously.

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