IP-2022-000036 - [2023] EWHC 2005 (IPEC)

Section 47(2)(a) of the Trade Marks Act 1994 (“the 1994 Act”) provides that the registration of a trade mark may be declared invalid if there is an earlier trade mark within the meaning of s.6 of the 1994 Act in relation to which the conditions set in any of s.5(1), (2) or (3) of the 1994 Act obtain.

Ford is the proprietor of two trade marks which qualify as earlier trade marks. They are:

By the time of the trial the defendants alleged that the conditions of s.5(2) and (3) obtain. Those subsections (and s.5(3A)) provide, so far as is relevant:

“(2)

A trade mark shall not be registered if because—

(a)

it is identical with an earlier trade mark and is to be registered for goods or services similar to those for which the earlier trade mark is protected, or

(b)

it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected,

there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.

(3)

A trade mark which—

(a)

is identical with or similar to an earlier trade mark, and

(b)

….

shall not be registered if, or to the extent that, the earlier trade mark has a reputation in the United Kingdom ... and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

(3A) Subsection (3) applies irrespective of whether the goods and services for which the trade mark is to be registered are identical with, similar to or not similar to those for which the earlier trade mark is protected.”

There are restrictions on the right to apply for a declaration of invalidity under s.47. First, the Trade Mark (Relative Grounds) Order 2007 (SI 2007/1976) (“the 2007 Order”) limits the right to apply for a declaration of invalidity of a later trade mark to the proprietor of the earlier trade mark and licensees under that mark. Secondly, s.47(2A) imposes requirements regarding the use of the earlier trade mark which must be satisfied before there may a declaration. Thirdly, there will be no declaration if the proprietor of the earlier trade mark has acquiesced in the use of the later trade mark.