Your name in lights? Just so long as it's honest: the 'own name' defence in trade mark and passing off law

This chapter considers the meaning of the terms that appropriately denote the subject matter protectable by registered trade mark and allied rights, including the common law action of passing off. Drawing on the earlier analyses of the objects protectable by patent and copyright, it defines the trade mark, designation of origin, and geographical indication in their current European and UK conception as hybrid inventions/works in the form of purpose-limited expressive objects. It also considers the relationship between the different requirements for trade mark and allied rights protection, and related principles of entitlement. In its conclusion, the legal understandings of trade mark and allied rights subject matter are presented as answers to the questions identified in Chapter 3 concerning the categories and essential properties of the subject matter in question, their method of individuation, and the relationship between and method of establishing their and their tokens’ existence.

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Acquisition Of Rights

European Trade Mark Law ◽

10.1093/oso/9780199680443.003.0006 ◽

2017 ◽

Author(s):

Annette Kur ◽

Martin Senftleben

Keyword(s):

European Union ◽

United Kingdom ◽

Trade Mark ◽

Nordic Countries ◽

The European Union ◽

Legal Regime ◽

Passing Off ◽

The United Kingdom ◽

Trade Mark Law ◽

European Trade

Under European trade mark law, protection is only acquired through registration (Article 6 EUTMR; Article 1 TMD). Whether the mark is actually used or not is of no relevance at this stage: neither is it a requirement for protection, nor does it grant a substantive right under the European Union Trade Mark Regulation (EUTMR) or the Trade Mark Directive (TMD). However, such protection may follow from national law. Member States are free to grant use-based trade mark protection within their jurisdiction, and in a number of them—Austria, Germany, Italy, the Nordic countries, and, in the form of passing off, the United Kingdom—such protection is available under terms that may differ from country to country. The specificities of the legal regime applying to such signs are independent from the provisions in the TMD.

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14. Defences to trade mark infringement

Intellectual Property Law ◽

10.1093/he/9780198747697.003.0014 ◽

2019 ◽

pp. 320-360

Author(s):

Stavroula Karapapa ◽

Luke McDonagh

Keyword(s):

Intellectual Property ◽

Trade Mark ◽

European Economic Area ◽

European Economic ◽

Trade Mark Infringement ◽

Economic Area ◽

Parallel Importation ◽

Own Name ◽

Scope Of Protection

This chapter looks at the various defences against trade mark infringement and the way in which the courts have interpreted them. A defendant's principal argument will be to deny that there has been any infringing conduct, and/or that what has been done is not within the scope of protection given to the registered mark. There are, however, a number of statutory defences. These defences span from the use of one's own name to a framework outlining the conditions of comparative advertisement and the role of exhaustion of rights as a defence to an action for trade mark infringement, including the ways in which the intellectual property owner can object to the parallel importation of non-European Economic Area (EEA) goods.

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41. Trade mark defences

Intellectual Property Law ◽

10.1093/he/9780198769958.003.0041 ◽

2018 ◽

Author(s):

L. Bently ◽

B. Sherman ◽

D. Gangjee ◽

P. Johnson

Keyword(s):

Trade Mark ◽

Comparative Advertising ◽

Trade Marks ◽

Intended Purpose ◽

Parallel Importation ◽

First Sale ◽

Own Name ◽

Scope Of Protection

This chapter is about the various defences that are available to a person who has been accused of infringing a trade mark under the Trade Marks Act 1994. A prominent limitation on the scope of protection, which operates defensively, is whether the defendant has made a legally relevant use of the mark. Besides this, the defendant is excused if the mark has been used (i) as the defendant’s own name or address, (ii) for descriptive purposes, or (iii) to indicate the intended purpose of a product or service. These threeuses are subject to a proviso testing for whether the use has been in accordance with honest practices in industrial and commercial matters. Additional defences facilitate comparative advertising and permit parallel importation via the exhaustion of the trade mark owner’s rights upon first sale.

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Trade mark infringement and passing off can be caused by resale of disassembled branded products

Journal of Intellectual Property Law & Practice ◽

10.1093/jiplp/jpz091 ◽

2019 ◽

Vol 14 (9) ◽

pp. 660-662

Author(s):

Alessandra Naia

Keyword(s):

Trade Mark ◽

Passing Off ◽

Trade Mark Infringement

Abstract Nomination di Antonio E Paolo Gensini SNC and Nomination SRL v Sebastian and Victoria Brealey (trading as JSC Jewellery) [2019] EWHC 599 (IPEC), 13 March 2019

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Trade Marks and Allied Rights

10.1093/oxfordhb/9780198758457.013.24 ◽

2017 ◽

Author(s):

Dev Gangjee

Keyword(s):

Brand Image ◽

Trade Mark ◽

Unfair Competition ◽

Legal Issues ◽

Geographical Indications ◽

Trade Marks ◽

Passing Off ◽

Domain Names ◽

Detrimental Impact ◽

Scope Of Protection

This chapter outlines the principal features of trade mark protection regimes, drawing primarily on EU and US materials to illustrate the underlying legal issues. It includes an outline of the principal allied rights; namely (i) unfair competition, (ii) passing off, (iii) publicity rights, (iv) geographical indications, and (v) domain names. The overview traces the incremental re-orientation of trade mark regimes in recent decades as they have moved beyond their traditional remit of origin-indication protection in response to claims that brand image needs to be better accommodated. In some cases, the ensuing broader scope of protection can have a detrimental impact on speech and inhibit marketplace competition.

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Character merchandising: aspects of legal protection

Legal Studies ◽

10.1111/j.1748-121x.2001.tb00572.x ◽

2001 ◽

Vol 21 (2) ◽

pp. 226-250

Author(s):

Andrew McGee ◽

Sarah Gale ◽

Gary Scanlan

Keyword(s):

Present State ◽

Legal Protection ◽

Trade Mark ◽

Third Parties ◽

Trade Marks ◽

Passing Off ◽

Legal Control ◽

The Creation ◽

The Law ◽

Special Circumstances

The article considers the present state of the law of character merchandising. It questions whether the law relating to character merchandising should be further developed and extended so as to give an individual a comprehensive right to prevent the unauthorised use of aspects of his personality by third parties in connection with the promotion or sale of goods or services. In this context the article rejects the creation of new comprehensive remedies such as a tort of appropriation of personality as being undesirable and impractical. The article maintains that unauthorised acts of personality appropriation or use are already subject to adequate legal control through the law of trade marks and passing off. In this regard the article further suggests that tortious remedies such as defamation, malicious falsehood, and, in restricted circumstances copyright, provide effective sanctions against the unauthorised use of an individual's persona in commercial enterprises in particular and special circumstances. These remedies supplement and complement the principal remedies provided by trade mark protection and passing off.

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