Guarding trade marks

Trademarks are jealously guarded by rights holders. The reason is simple - by letting trademark abuse occur the right to the mark (and the business) evapourates. There is a general principle in this area of law which allows for someone to use their own name whilst not infringing someone else's

Trademarks are jealously guarded by rights holders. The reason is simple - by letting trademark abuse occur the right to the mark (and the business) evapourates.

There is a general principle in this area of law which allows for someone to use their own name whilst not infringing someone else's trademark. But there is a catch - the use has to be "in accordance with honest practices in industrial and commercial matters". In the 2010 case - Och-Ziff Management Europe Ltd & anor v Och Capital LLP & anor - the defendant found this isn't always the situation.

The defendant set up the company and was aware of the existence of the claimant yet did not carry out a trade mark search. Understandably, the claimant made a complaint just after the company started trading. Still being a new business, the defendents marketing material - website and brochures - weren't yet ready and its registered name was used for its services, not just as a mere naming formality.

That meant the defendant had not acted fairly in relation to the legitimate interests of the claimant and its use of the name amounted to unfair competition, and infringed the claimant's trade mark.

What does this all mean? It is now easier for trade mark owners to win in "own name defence" cases.The advice is to keep an eye out for what others are doing and to carry out carry out a trade mark search if (when) creating a new business.
This was first published in April 2011

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