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Trademark Defences Notes

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Defences

? Use of a registered mark - S.11(1): Registration gives a defence to actions for infringement. Acts as an incentive for traders to apply for TM registration. Where D relies on this, C will usually respond by challenging validity under s.47(6).

? Use of own name and address - S.11(2)(a): A registered TM is not infringed by 'the use by a person of his own name or address', in contrast to passing off. Subject to proviso of 'honest practices'. The provision applies also to business and company names: Celine Sarl.Anheuser-Busch [2004]; ECJ held defence not confined to personal names. Doubt still remains over whether defence will apply to a nickname.Hotel Cipriani v. Cipriani (Grosvenor) [2008]; Facts: D opened a restaurant called Cipriani. C sued for TM infringement. Decision: Held; classic case of double identity. Also held 'Cipriani London' infringed. D conceded infringement but argued own name defence. D could not rely on own name defence since neither Cipriani nor Cipriani London was in its own name. Use of Cipriani amounted to unfair competition and could not be justified under the proviso - not in accordance with honest practices. If art.12(a) were to be interpreted as applying to a company's trading name as opposed to its registered name, it would constitute a substantial inroad into the rights conferred by art.9(1), particularly where the company had only just commenced trading.OCH-ZIFF [2010]; Held use of signs not in accordance with honest practises; amounted to unfair practices.

? Descriptive uses - S.11(2)(b): A registered mark is not infringed by the use of indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of the goods or of rendering of the service, or other characteristics of the goods or services. Again subject to proviso they are used in accordance with honest practices in industrial or commercial matters. Defence limits extent to which a descriptive word can be taken from the public domain.

- Gerolsteiner Brunnen [2004] (GERI/KERRY SPRING); Facts: C bottled mineral water and registered mark 'Geri Spring' in Germany. D marketed soft drinks in Germany as their drinks were made in Ireland from Kerry Spring. Decision: Held Kerry Spring is being used as a indication of geographical origin. Mere fact of oral confusion does not amount to something not being in line with the proviso.
? Use to indicate the intended purpose of a product or service - S.11(2)(c): A registered mark not infringed by use of the mark 'where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts'. As before, this is subject to the proviso of use in accordance with honest practices in industrial or commercial matters. Recognises traders may have a legitimate need to refer to a TM, even though they have no legal or economic link to the TM proprietor, e.g. if the trader sells spare parts for a specific product, or repairs particular brands of goods. Trader will want to inform consumers that parts fit particular products and most efficient way is to refer to TM. If TMOs were able to control

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