In this article, South Bank Legal’s trade marktrade mark: a symbol, most commonly used in conjunction with... More solicitors take a moment to explain the “own name” defence in the context of trade marktrade mark: a symbol, most commonly used in conjunction with... More law, particularly where a legal entity, rather than a natural person, is attempting to rely upon the defence.
Exclusive rights of the trade marktrade mark: a symbol, most commonly used in conjunction with... More owner
The owner of a registered trade marktrade mark: a symbol, most commonly used in conjunction with... More has exclusive rights in that trade marktrade mark: a symbol, most commonly used in conjunction with... More including the rights to prevent others from infringing the trade marktrade mark: a symbol, most commonly used in conjunction with... More by:
- using, in the course of trade, a sign which is identical with the trade marktrade mark: a symbol, most commonly used in conjunction with... More in relation to goods or services identical with those for which the owner’s trade marktrade mark: a symbol, most commonly used in conjunction with... More is registered; and
- using, in the course of trade, a sign where because:
- the sign is identical with the trade marktrade mark: a symbol, most commonly used in conjunction with... More and is used in relation to goods or services similar to those for which the owner’s trade marktrade mark: a symbol, most commonly used in conjunction with... More is registered; or
- the sign is similar to the trade marktrade mark: a symbol, most commonly used in conjunction with... More and is used in relation to goods or services identical with or similar to those for which the owner’s trade marktrade mark: a symbol, most commonly used in conjunction with... More is registered
there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade marktrade mark: a symbol, most commonly used in conjunction with... More.
Trade mark infringement claims can however be complex to prosecute, with many claims contested (successfully or otherwise) by defendants on the grounds that what they have done does not amount to one of the infringing acts set out above. Less frequently however, defendants will seek to resist claims by availing themselves of a statutory defence – the own name defenceown name defence: a defence which can be raised to an allega... More – pursuant to section 11(2)(a) of the Trade Marks Act 1994.
Own name defenceown name defence: a defence which can be raised to an allega... More explained
Notwithstanding the exclusive rights in a registered trade marktrade mark: a symbol, most commonly used in conjunction with... More conferred on its owner there exists a freedom or right for persons to use their own name in the course of trade. To that end the Trade Marks Act and The EU Trade Marktrade mark: a symbol, most commonly used in conjunction with... More Regulation provide that a registered trade marktrade mark: a symbol, most commonly used in conjunction with... More cannot be infringed by someone using their own name – provided that person is doing so in accordance with honest practices.
This limitation of the rights of a trade marktrade mark: a symbol, most commonly used in conjunction with... More owner has come to be known as the “own name” defence.
Own name defenceown name defence: a defence which can be raised to an allega... More in practice – Hotel Cipriani SRL and others v Cipriani (Grovesnor Street) Limited and others
The defence can apply to legal entities and individual persons alike. But where the defendantdefendant: the respondent against whom court proceedings are... More is a legal entity such as a company, there is a limit to how far it may depart from its full legal name whilst still retaining the right to successfully rely on the own name defenceown name defence: a defence which can be raised to an allega... More. This is what the case of Hotel Cipriani was about.
The claimant, a group of hotels with the registered trade marktrade mark: a symbol, most commonly used in conjunction with... More “Hotel Cipriani”, sued the defendantdefendant: the respondent against whom court proceedings are... More for trade marktrade mark: a symbol, most commonly used in conjunction with... More infringement after it opened a restaurant in London called “Cipriani London”. The defendantdefendant: the respondent against whom court proceedings are... More was a hotel and restaurant chain run by the Cipriani family whose patriarch had in fact founded the Hotel Cipriani business in Venice in the 1950’s, but later sold his interests in that business. The defendantdefendant: the respondent against whom court proceedings are... More sought to rely on the own name defenceown name defence: a defence which can be raised to an allega... More.
The Court of Appeal determined that the own name defenceown name defence: a defence which can be raised to an allega... More did not apply; in part because the defendant’s own name was Cipriani (Grovesnor Street) Limited, not “Cipriani London” or “Cipriani”. The own name defenceown name defence: a defence which can be raised to an allega... More could not apply to the defendant’s trading name or the names of its shareholders, but only its legal name. Further, the defendants were aware of the claimant’s right to the “Hotel Cipriani” trade marktrade mark: a symbol, most commonly used in conjunction with... More, so their use of Cipriani (Grovesnor Street) Limited was contrary to honest practices.
South Bank Legal are London solicitors specialising in intellectual propertyintellectual property: a piece of work or a creation by th... More disputes including trade marktrade mark: a symbol, most commonly used in conjunction with... More infringement. For a confidential discussion about any the issues discussed above, please feel free to contact us today.