End of the road for Registered Trade Mark Defence

Just as one defence to registered trade mark infringement in the UK evolves (the Own Name Defence in ASSOS v ASOS) another - the ""Registered Trade Mark Defence"" - heads towards extinction. Section 11(1) of the UK Trade Marks Act 1994 provides that ""a registered trade mark is not infringed by use of another registered trade mark ..."". This on the face of things implied that even if the infringer's registration post dated yours it would first be necessary to cancel their registration before being able to sue them. This defence does not exist in the Trade Mark Directive which harmonised member state laws with respect to infringement and so practitioners have long felt this provision simply cannot be good law. However it its existence and a lack of a specific ruling on interpretation has kept a layer of doubt on the issue - sufficient in some cases to prevent summary judgement being issued. The recent Preliminary Ruling from the Court of Justice in Rosa dels Vents v U Hostels (C-491/14), whilst not a specific reference on the UK provision is the clearest clarification yet that this cannot be a valid defence. The ruling confirmed that the exclusive right of the holder of a registration to prevent third parties from using in the course of trade identical or similar signs to its brand extends to the third party holder of a later mark without it being necessary for the nullity of that mark is declared beforehand. National provisions must be interpreted inline with this. The provision remains on the UK statute book but the irrelevance of this defence is clearer. The old adage that a trade mark registration is a sword not a shield is that bit more true.

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