Middlemiss, Susie --- "Permitted Use Under European Law: The Framework" [2006] ELECD 230; in Phillips, Jeremy (ed), "Trade Marks at the Limit" (Edward Elgar Publishing, 2006)

Book Title: Trade Marks at the Limit

Editor(s): Phillips, Jeremy

Publisher: Edward Elgar Publishing

ISBN (hard cover): 9781845427382

Section: Chapter 2

Section Title: Permitted Use Under European Law: The Framework

Author(s): Middlemiss, Susie

Number of pages: 15

Extract:

2. Permitted use under European law:
the framework
Susie Middlemiss

NON-INFRINGING ACTS
Most defences to trade mark infringement actions revolve around the elements
which must be present to establish infringement. Attention focuses on issues
such as the analysis of nuances in spelling and pronunciation of the trade
marks or signs of competing parties in order to assess their identity or simi-
larity, comparison of the goods or services for which they are used and the
likelihood of confusion between them. There are also defences or exceptions
to infringement which do not centre on the comparison of marks, goods or
services. These defences focus instead on the nature of use of a trader's sign,
where specific categories of use are expressly permitted.
Under European law, there are broadly four varieties of use which are toler-
ated in certain circumstances:
· descriptive use (in particular references to the characteristics or use of
the goods or services);
· use in relation to genuine goods (most frequently falling under the ambit
of the doctrine of `exhaustion');
· comparative advertising and
· use in the face of acquiescence and use of earlier rights (these arise in
rather specific circumstances).
The first group of defences may be conveniently referred to as `descriptive
defences', since they broadly revolve around the descriptive use of a sign.
These exceptions allow a trader, for example, to refer to the trader's own name
or to the characteristics or intended purpose of goods or services without
infringing another's trade mark. European legislation ...