Defences and exceptions to trade mark infringement

The following IP practice 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
  • Acquiescence

Defences and exceptions to trade mark infringement

This Practice Note refers to both UK trade mark registrations and EU trade mark (EUTM) registrations and includes references to both UK and EU case law and legislation. The UK is no longer part of the EUTM regime as Regulation (EU) 2017/1001 was revoked in the UK at 11.00 pm on 31 December 2020 (IP completion day). However, pursuant to the Trade Marks (Amendment etc) (EU Exit) Regulations 2019, SI 2019/269 and the Designs and International Trade Marks (Amendment etc) (EU Exit) Regulations 2019, SI 2019/638, holders of EUTMs as at IP completion day automatically became holders of comparable national UK trade mark registrations which are governed by the Trade Marks Act 1994 (TMA 1994). For further information, see Practice Note: What does IP completion day mean for intellectual property?

The comparable right created is known as a ‘comparable trade mark (EU)’ (or, for international registrations which designate the EU, a ‘comparable trade mark (IR)’).

In terms of infringement, one of the more important aspects of the comparable right created is that reference to an EUTM or international registration designating the EU in any document made before IP completion day is read as including references to the comparable rights created on exit (unless there is evidence that the document was not intended to have effect in the UK). Further, a

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