Trade Marks and Honest Concurent Use
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3 November 2011
Trade Marks & Honest Concurent Use
This article deals with the matter of
honest concurent use of trade marks.
Section 7 of the Trade Marks Act 1994
deals with registration where there has been honest concurrent use of
two identical or similar trade marks i.e. grounds under section 5(1-3)
and earlier rights s5(4)) for refusal.
Section 7(2) states that if there is such
honest concurrent use the Examiner will not refuse registration because
of an earlier mark unless the earlier rights holder raises an
objection, on this ground. However from 2006 the Examiner does not
raise objections on relative grounds, so to define the meaning of this
is difficult.
It has been stated in case law that:
...the mere fact that there has
been honest concurrent use is not a defence, which in itself will save
an application, but it is one of the "relevant" factors which should be
taken into account in determining whether there is a likelihood of
confusion (CODAS Trade Mark 2000)
This case law although relevant to the
Registry refusing registration under s5 In other words may also be
utilised by the Registry in opposition hearings to determine if
oppositions have validity.
Of section 7(2) therefore may be said that
it adds a string to the bow of the applicant, which may still be cut in
proceedings. But then only if the earlier rights holder objects to this
and argues it to be false. To use another metaphor it adds another
hurdle, that the Registry and the prior rights holder both need to be
overcome - the prior rights holder, because he probably does not want
registration and the examiner, hearing officer or court to be persuaded
that there has been honest concurrent use in the matter and the ground
has been made out initially.
An interesting aside to this section is
the crossover with passing off, commonly a feature in cases where this
section is raised. In the 1861 case of Dent v Turpin, where Mr Dent had
given both his sons one of his shops there were then two separate
businesses called Dent, who could not stop each other, but they could
both stop a Mr Turpin from using Dent & Turpin. A passerby
might be confused between the two Dent's, but this confusion was
legitimate, whereas the Dent and Turpin would be misrepresentation.
'Legitimate' confusion is the basis of the section, wedded to the
principle that if marks have coexisted for some time, there is indeed
less chance of confusion in the first place. This in turn leads to
considerations of distinctiveness as discussed in Phones4u v Phone4u; a
case discussed further elsewhere in the reading room.
And finally, just to further question s7,
s7(5) states that where an order under s8 of the TMA is in force, then
s7 TMA does not apply. Section 8(1):
The Secretary of State may by
order provide that in any case a trade mark shall not be refused
registration on a ground mentioned in section 5 (relative grounds for
refusal) unless objection on that ground is raised in opposition
proceedings by the proprietor of the earlier trade mark or other
earlier right.
This is the case since 2006 as stated
above, yet what does that mean for honest concurrent use? One can only
assume that s7 will continue in all but name.
Lawdit Solicitors are a
commercial firm of Solicitors. info@lawdit.co.uk
About the Author
Lawdit
Solicitors offer services and advice for litigation,
commercial contracts, Intellectual Property and IT legal agreements. We
are experts in commercial law with a heavy emphasis on Intellectual
Property, Internet and e-commerce law. Lawdit is a member of the
International Trademark Association, the Solicitors' Association of
Higher Court Advocates and we are the appointed Solicitors to the
largest webdesign association in the world, the United Kingdom Website
Designers Association.
