Brands Bulletin - February 2010

Welcome to this month's Ashfords’ Brands Bulletin.

This month we are addressing the issue of the legality of using another's UK registered trade mark in order to inform the public that you provide services relating to that person's trade marked goods (for example, repair and maintenance services), or that the goods you supply can be used with that person's trade marked goods (for example, as spare parts and accessories).

The use of another person's UK registered trade mark to indicate the intended purpose of your goods/services
 
Section 11 (2) (c) of the Trade Marks Act 1994 states that a UK registered trade mark is not infringed by the use of the trade mark where it is 'necessary to indicate the intended purpose of a product or service (in particular, as accessories or spare parts), provided the use is in accordance with honest practices in industrial or commercial matters'.

But what does that mean in practice? 

The European Court of Justice ("ECJ") has held that the use of a trade mark will only be 'necessary' to indicate the intended purpose of a product or service if, in practice, it constitutes the only means of providing the public with comprehensive and complete information on the intended purpose, in order to preserve the undistorted system of competition in the market for that product.  Whether use of the trade mark is 'necessary' will depend upon the facts of each case.

The ECJ  has also held that 'honest practices' means being under a duty to act fairly in relation to the legitimate interests of the trade mark owner.  'Use' would not be 'honest' if it affects the value of the trade mark by taking unfair advantage of its distinctive character or repute, or it entails discrediting or denigrating the trade mark, or where a third party presents its product as an imitation or replica of the product bearing the trade mark of which it is not the owner.  Whether use of the trade mark is in accordance with 'honest practices in industrial or commercial matters' will depend upon the facts of each case.

Further, if you use the registered trade mark in such a manner as to lead customers to conclude that your goods or services are those of the owner of the registered trade mark, or are in some way commercially connected with him (e.g. customers conclude from your use of the registered trade mark that you are an official distributor, dealer or maintenance provider authorised and approved by the trade mark owner) then this will fall outside of the scope of s11 (2) (c) and your actions will be unlawful.

The overall presentation of the product or service marketed by you, particularly the circumstances in which the trade mark of which you are not the owner is displayed in that presentation, is a very important factor in determining whether your use of the trade mark is in accordance with 'honest practices in industrial or commercial matters'.  Have you made enough effort to ensure that customers distinguish your products and services from those of the trade mark owner?  Would reasonable members of the trade concerned say that your use is 'honest'? Have you acted fairly in relation to the legitimate interests of the trade mark owner?   All will turn upon the facts of each case.    

Should you wish to receive further editions of the Ashfords' Brands Bulletin, please email  g.williams@ashfords.co.uk        

Ashfords LLP is regulated by the Solicitors Regulation Authority. The information in this note is intended to be general information about English law only and not comprehensive. It is not to be relied on as legal advice nor as an alternative to taking professional advice relating to specific circumstances.