The new Regulation (EU) 2015/2424 amending Council Regulation 207/2009/EC on the Community Trade Mark (CTM) will enter into force from 23 March 2016
The use of another’s registered trade mark without consent as a trade name or company name will now specifically be deemed infringing use. Using a sign as a trade name or a company name can infringe a CTM.
Defendants in infringement proceedings are currently able to rely on the “own name” defence to infringement, whether or not the defendant is a natural or legal person, i.e. whether or not the name used is a personal or company name.
The new Regulation expressly limits the defence to use of personal names only. Legal entities will no longer be able to rely on the fact that they are using their company name. With the new Regulation in place, ASOS (see Maier v ASOS plc) would not have benefitted from the ‘own name’ defence.
In view of that using a registered trademark as a trade or company name (or part of such) now is a specific infringement, it is more important than ever that businesses looking to expand into the EU cannot rely on their trade or company name. They should conduct the necessary clearance searches to ensure that their trade or company name will not infringe any third party rights. If the clearance search indicates that the dominant part of the company name does not infringe any third party rights, the company should file an EU trademark application. The other side of the coin, trademark owners that do not already subscribe to a company name watching service may consider doing so.
Niclas Dahlberg, Attorney at Law
