Your name in lights? Just so long as it's honest: the 'own name' defence in trade mark and passing off law

Abstract

Darren Meale is a Senior Associate at Dentons in London specialising in intellectual property advice and litigation. He is also a Deputy District Judge in the English County Courts (on the South Eastern Circuit). It has long been possible under English and European trade mark law for an infringer to excuse himself from liability by claiming only to be trading under his own name. But what is the precise scope of that defence? The defence is now available, in theory, to all sorts of personal, registered, brand and trading names of traders. That is provided that the traders seeking to rely on it are doing so in an honest manner. To be deemed honest, traders must overcome a number of factors, not all of which are logical or consistent with the nature of a trade mark law infringement defence. This article explores the jurisprudence of the “own name” defence developed over the past 20 or so years, with a focus on its recent refinement in a series of decisions by Mr Justice Arnold in the English High Court. It highlights a number of inconsistencies and challenges within that case law, and criticises some of the factors considered relevant by the English and European courts. It also proposes some alternative questions which might better address the issue of an own name trader's honesty.