Defences to Trademark Infringement

There are several defences that can be raised in response to a claim of trademark infringement. These defences aim to challenge the alleged infringement and provide a legal basis for the defendant's use of a similar mark.

Descriptive use: If the defendant can demonstrate that his use of the mark is purely descriptive and accurately describes the goods or services being offered, it may be a valid defence. Descriptive terms that are commonly used in the industry and are not likely to cause confusion may be permissible.

Fair use: Fair use allows the use of a trademark in a descriptive or non-trademark manner. This defence typically applies when the mark is used for informational or comparative purposes, commentary, criticism, parody, or news reporting. Fair use is determined on a case-by-case basis, considering factors such as the purpose and nature of the use, the extent of the use, and the potential for confusion.

Prior use: If the defendant can demonstrate that he has been using the similar mark in commerce prior to the plaintiff's registration or use of the mark, he may have a defence based on prior use. However, the defendant's prior use must be continuous and substantial to be considered a valid defence.

Consent: If the trademark owner has given explicit permission or consent for the defendant to use the mark, it can serve as a defence against infringement claims. Consent may be in the form of a written agreement or an implied license.

Generic use: If a defendant can demonstrate that the alleged trademark is being used in a generic sense to refer to the general category of goods or services, it can serve as a defence against infringement claims. A trademark is considered generic when it has become the common or generic name for a particular type of product or service.

Genericide: If a trademark has become so widely used to describe a category of goods or services that it has lost its distinctiveness (genericide), it may no longer be protected as a trademark. Defendants may argue that the trademark has become generic.

Abandonment: Abandonment occurs when a trademark owner stops using the mark with the intent not to resume its use. If a defendant can demonstrate that the trademark in question has been abandoned by the owner, it can be a valid defence against infringement claims.

Comparative advertising: Comparative advertising involves using a competitor's trademark in advertising to compare products or services. This defence allows for the use of a trademark to make fair and truthful comparisons between competing products. To be a valid defence, the comparative advertising must not be misleading, disparaging, or create confusion among consumers.

Exhaustion of rights: The exhaustion of rights defence comes into play when the trademark owner has already put the goods bearing the trademark on the market, either by selling them or authorising their sale. Once the goods have been lawfully placed on the market, the trademark owner's rights are considered exhausted, and he cannot prevent further distribution or resale of those goods within the same jurisdiction. This defence is based on the principle that the trademark owner should not be able to control or restrict the free movement of goods after their initial sale. For example, if you buy a textbook, you can resell it later, but you cannot make a copy of the textbook and then resell the copy.

Lack of likelihood of confusion: One of the key elements in a trademark infringement claim is the likelihood of confusion. Defendants may argue that their use of a similar mark does not create a likelihood of confusion among consumers regarding the source of the goods or services. They may assert that the marks are distinct enough to avoid confusion.

Parody: When a trademark is used in a humorous or satirical manner, it may be considered a parody. Parody is a defence to trademark infringement if it is clear that the use is meant to be humorous or satirical and not to confuse consumers.

Nominative use: Nominative fair use occurs when a defendant uses another party's trademark to refer directly to the trademarked goods or services themselves, rather than to identify the source of the goods or services. This type of use is generally permissible if done accurately and without misleading consumers.

Defences to trademark infringement are legal arguments or justifications that defendants may use to contest allegations that they have violated someone else's trademark rights. Trademark law is designed to protect brand owners from unauthorised use of their trademarks, but there are certain defences that can be raised in cases of alleged trademark infringement.