Home » Law » Are the days of a section 11(1) TMA defence numbered? (TMA – Trade Marks Act 1994)

Are the days of a section 11(1) TMA defence numbered? (TMA – Trade Marks Act 1994)

Keltie LLP

K2 IP Limited

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Court (Small)“A registered trade mark is not infringed by use of another registered trade mark for goods or services for which the latter is registered (…)”(s.11(1)).  This section of the UK Trade Marks Act 1994 (also referred to as “registered mark defence”) has generally been the basis for advising clients to obtain a UK trade mark registration in addition to a Community Trade Mark (‘CTM’) registration.

UK trade mark proprietors have been able to rely on the registered mark defence mentioned above as a prima facie defence to trade mark infringement proceedings. Prior to the EU decision below, the validity of a UK registered mark would have to be challenged first before infringement proceedings commenced. It would appear from the EUCJ ruling below that there may be a movement away from this defence.

Last week, the European Court of Justice interpreted Article 9(1) of the CTM Regulation (207/2009/EC) which affords exclusive rights which are enforceable against all third parties and ruled in Case C-561/11 (FCI v FCIPPR) that a CTM proprietor can successfully bring an action against a third-party proprietor for infringement of a CTM resulting from the use of a subsequent registered CTM ‘without the need for the latter mark to have been declared invalid beforehand’.  The delay in waiting for invalidity proceedings to conclude before issuing proceedings for an infringement claim is argued to weaken significantly the protection afforded to CTMs.

This ruling illustrates that the law under section 11(1) of the UK TMA 1994 is not harmonised with EU law with regard to having the latter mark revoked or declared invalid before issuing infringement proceedings. In light of this ruling, trade mark proprietors can potentially issue successful infringement proceedings against a third party’s use of its later registered trade mark even if invalidity proceedings have not been issued beforehand. This ruling may also mean that in such circumstances remedies such as injunctive relief will be readily available to trade mark proprietors. We wonder if the EUCJ ruling will result in an amendment to the UK TMA.

The full judgment can be found here.

Eleni Mezulanik    26 February 2013


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