The s.11(2) defence
88. For the same reasons, it seems to me that Battle’s defence based on s.11(2)(b) of the Trade Marks Act 1994 must fail. That defence only applies to signs or indications which are not distinctive or which concern the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services. Moreover, it only applies where the use is in accordance with honest practices in industrial or commercial matters. Here the word mercury was distinctive and was not being used descriptively. Nor, given my conclusions regarding the issues of unfair advantage and due cause, was its use in accordance with honest practices in industrial or commercial matters.
- Claim No. IL-2020-LIV-000001
- Introduction
- The witnesses
- The issues
- The trade mark issues – general points
- Relevance of EU law
- The average consumer
- section 3(1)
- Is the word mercury descriptive?
- Is use of the word mercury customary?
- Invalidity - bad faith, s.3(6()
- Infringement – the acts said to infringe the trade mark
- Infringement –
- s.10(1) Trade Marks Act 1994
- s.10(2) Trade Marks Act 1994
- Condition (iv)
- Condition (v)
- Condition (vi)
- s.10(3) Trade Marks Act 1994
- Condition (i) - reputation
- Condition (v) - sign at least similar to mark
- Condition (vii) - a link
- Condition (viii) - injury
- Condition (ix) – without due cause
- The s.11(2) defence
- Trade mark infringement - conclusion
- Passing off
- Joint tortfeasorship
- Conclusion