Jul 18, 2017

Own name trade mark defence revoked for corporate entities

Until recently there was an "own name" defence to both UK and EU trade mark infringement. This defence continues to apply in the UK for both corporate identities and individuals until 2019, when it will be restricted to individuals only. For EU trade mark infringement actions, that change has already taken effect, by virtue of Article 1(13) of Regulation (EU) 2015/2424. A recent case between Sky and US company SkyKick has highlighted the issues surrounding this change in the law.

The dispute arose when SkyKick filed for an EU trade mark for SKYKICK in 2016, following which Sky issued proceedings for trade mark infringement and passing off in respect of a number of its marks including the name SKY, including allegations of both EU and UK trade mark infringement.

SkyKick has been trading in the US since 2012, having applied for a US trade mark in 2011 and, whilst also claiming that the services it offered were different to those offered by Sky, wanted to rely on the own name defence, which no longer applies as a defence to EU trade mark infringement for corporate entities. SkyKick applied for proceedings to be stayed and for an order to make a reference to the Court of Justice of the European Union (CJEU) on the question of the revocation of the own name defence for EU trade mark infringement (the validity of article 13(1) of Regulation (EU) 2015/2424), on the grounds it is contrary to fundamental EU rights and is therefore invalid. Those EU rights included freedom to conduct business, right to property, equality before the law and non-discrimination.

SkyKick's application was refused at a court hearing, with the judge confirming that the own name defence will not assist SkyKick in respect of EU trade mark infringement because it has been revoked, and that the current proceedings would not be stayed.

Despite the above, the issue may be referred to the CJEU at a later stage in proceedings, when perhaps the facts surrounding the claim have been more clearly established or there have been findings on the various claims in the action.

If you have any questions on the above, please do not hesitate to contact the team at McDaniel & Co. on 0191 281 4000 or legal@mcdanielslaw.com.

Posted by: in: EU/International, News, Trade Marks

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