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“Own Name” Defence in Trade Mark Cases

Often a client will contact us with a query to the effect of “I want to use my own name, ‘Joe Bloggs’, as a trading style.  Surely this is ok?”

The English Courts have considered this so-called “Own Name” defence and, in particular, two fairly recent decisions by the Court of Appeal have examined this issue (Hotel Cipriani v Cipriani (Grosvenor Street) 2014; and Maier & Assos v Asos, 2015).  In both instances, the Court of Appeal decided that use of one’s own name could, in certain circumstances, be a valid defence to claims of trade mark infringement or passing off.  However, it is important to bear in mind that such use must be “in accordance with honest practices in industrial or commercial matters”.  For example, if your name is Joe MacDonald, and you decide to start up a fast food outlet and call it “MacDonald’s”, it would be extremely difficult to persuade a judge that you have acted in accordance with honest practices, should a certain well-known fast food restaurant company decide to complain. As ever, the viability of such a defence will depend on the particular details.

Should you require further advice, please get in touch with your regular contact at Nash Matthews.