Defences and exceptions to trade mark infringement
Defences and exceptions to trade mark infringement

The following IP guidance note provides comprehensive and up to date legal information covering:

  • Defences and exceptions to trade mark infringement
  • Defendant's use of own registered trade mark
  • Use of own name and address
  • Use of indications concerning characteristics of good/services—descriptive use
  • Use indicating the intended purpose of a product or service (particularly accessories and spare parts)
  • Earlier rights in a particular locality
  • Use in accordance with honest practices
  • Honest concurrent use

As of exit day (31 January 2020) the UK is no longer an EU Member State. However, in accordance with the Withdrawal Agreement, the UK has entered an implementation period, during which it continues to be subject to EU law. This has an impact on this Practice Note. For further guidance, see Practice Note: Brexit—IP rights.

The registration of a trade mark gives the owner the exclusive right to prevent others from using that mark, or a similar mark, without their consent. A trade mark owner may bring an action for trade mark infringement for unauthorised use of the mark (see Practice Note: Trade mark infringement). In order to ensure that other traders are allowed to compete freely and fairly in the market place, however, there are a number of defences and exceptions to trade mark infringement.

Section 11 of the Trade Marks Act 1994 (TMA 1994) provides specific exceptions to trade mark infringement (or limits on the effect of a registered trade mark), which apply even if the trade mark is validly registered. Similar provisions are included in Regulation (EU) 2017/1001.

These are:

  1. defendant's use of own registered trade mark for goods/services for which the mark is registered

  2. defendant's use of own name and address (provided the use is in accordance with honest practices in industrial or commercial matters). Pursuant to amendments