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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.

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.

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Article Published/Sorted/Amended on Scopulus 2011-11-14 12:06:28 in Legal Articles

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