Defences and exceptions to infringement of UK trade marks

The registration of a UK trade mark gives the owner the exclusive right to prevent others from using that mark, or a similar mark, without their consent. A trade mark owner may bring an action for trade mark infringement for unauthorised use of the mark. For more information, see Practice Note: Trade mark infringement—UK.

In order to ensure that other traders are allowed to compete freely and fairly in the market place, however, there are a number of defences and exceptions to trade mark infringement.

This Practice Note includes discussion of the application of the statutory defences and exceptions to trade mark infringement under section 11 of the Trade Marks Act 1994 (TMA 1994)—including the defendant’s own use of a registered trade mark, use of own name and address, use of indications concerning characteristics of goods and service or intended purpose, and use of an earlier right in a particular locality. It also considers the defence of non-use in infringement proceedings pursuant to TMA 1994, s 11A. In addition, it considers the defence

Jurisdiction(s):

United Kingdom

Key definition:

Infringement definition

What does Infringement mean?

A copyright work is infringed when anyone other than its owner or licensor performs or authorises the performance of one of the 'restricted acts' set out in the Copyright, Designs and Patents Act 1988 without permission, such as copying, issuing copies to the public, renting or lending to the public, performing or playing in public, communicating to the public or making an adaptation. Infringement does not need to involve the complete work; any use of a 'substantial part' will suffice.

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