Posts by: Niclas Dahlberg | (2) posts

Use of non-distinctive signs

The new Regulation (EU) 2015/2424 amending Council Regulation 207/2009/EC on the Community Trade Mark will enter into force from 23 March 2016


To the list of activities which a trademark owner will not in future be able to prevent a further exclusion has been added. The descriptive use defense (on the kind, quality, quantity, intended purpose, value, and geographical origin, time of production or other characteristics of the goods) has been extended to apply also to use of signs which are not distinctive. Thus, third parties will now have as a defence available against alleged infringement to claim that they use the sign in a descriptive way, provided that the use is made in good faith. Such use should always remain free for third parties.

The provision seems a bit odd. If a sign is not distinctive, it will not be used ‘as a trade mark’ when used and then there is no infringement pursuant to Article 10. Therefore, you will not come to the question of a limitation of the proprietor’s rights pursuant to the new Article 12 1 (b).

It must be presumed that a trademark is distinctive as long as it is registered. However, if a third party invokes the new Article 12 (1) (b) and successfully claims that the identical mark is used in a descriptive way, this would logically mean that the registered trademark is not distinctive and should be declared invalid. Or, if it is a combined word and device trademark, the proprietor will not have any protection for the descriptive word element as such.

Niclas Dahlberg, Attorney at Law

End to own name defence for corporate names

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