Trade Mark Infringement and the Own Name Defence

15th January 2018
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Trade Mark Infringement and the Own Name Defence

In this article, South Bank Legal’s trade mark solicitors take a moment to explain the “own name” defence in the context of trade mark law, particularly where a legal entity, rather than a natural person, is attempting to rely upon the defence.

Exclusive rights of the trade mark owner

The owner of a registered trade mark has exclusive rights in that trade mark including the rights to prevent others from infringing the trade mark by:

  • using, in the course of trade, a sign which is identical with the trade mark in relation to goods or services identical with those for which the owner’s trade mark is registered; and
  • using, in the course of trade, a sign where because:
  • the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the owner’s trade mark is registered; or
  • the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the owner’s trade mark is registered

there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark.

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 defence – pursuant to section 11(2)(a) of the Trade Marks Act 1994.

Own name defence explained

Notwithstanding the exclusive rights in a registered trade mark 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 Mark Regulation provide that a registered trade mark 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 mark owner has come to be known as the “own name” defence.

Own name defence 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 defendant 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 defence. This is what the case of Hotel Cipriani was about.

The claimant, a group of hotels with the registered trade mark “Hotel Cipriani”, sued the defendant for trade mark infringement after it opened a restaurant in London called “Cipriani London”. The defendant 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 defendant sought to rely on the own name defence.

The Court of Appeal determined that the own name defence did not apply; in part because the defendant’s own name was Cipriani (Grovesnor Street) Limited, not “Cipriani London” or “Cipriani”. The own name defence 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 mark, so their use of Cipriani (Grovesnor Street) Limited was contrary to honest practices.

South Bank Legal are London solicitors specialising in intellectual property disputes including trade mark infringement. For a confidential discussion about any the issues discussed above, please feel free to contact us today.

Intellectual Property & Technology