The owner of a registered trade mark ‘Premier’ sued for swing tags which carried the defendant’s full name ‘The Premier Company (UK) Ltd.’.
Held: A trade mark use can fall within the scope of the Art 6.1 defence. There there was no passing off or Art.5.1(a) infringement in respect of these: ‘If the use by Premier UK plc of swing tags does not amount to passing off, the claim for infringement of trade mark based on that use must fail also. This is because, as the judge recognised, there was no desire on the part of Premier UK to take unfair advantage of the reputation or goodwill of Premier Luggage. The swing tags were used for a legitimate commercial purpose – to identify the trade origin of Premier UK’s product and to take advantage of the existing goodwill and trade connections of Premier Decorations. The use of the name ‘The Premier Company (UK) Limited and the address ‘Premier House’ on the swing tags is within s.11(2)(a) of the 1994 Act.’
However, The Premier Company (UK) Ltd could not use Premier, Premier Luggage or the Premier Luggage Company with impunity under section 11(1)(a) because these were abbreviations or adaptations of the company’s name. There was no indication that it had adopted any of these words or phrases as a trading name
 EWCA Civ 387,  FSR 5
England and Wales
Appeal from – Premier Luggage and Bags Ltd v Premier Company (Uk) Ltd and Another ChD 17-Oct-2000
The word ‘Premier’ although devoid of distinctive character in itself, but having been registered as a trade mark, had acquired a sufficient distinctiveness to justify and found an action for infringement and passing off. The test was whether . .
Cited – GE Trade Mark HL 1973
A trade mark must be ‘distinctive’, it must be recognisable by a buyer of goods to which it has been affixed as indicating that they are of the same origin as other goods which bear the mark and whose quality has engendered goodwill. Trade Marks . .
Cited – Reed Executive Plc, Reed Solutions Plc v Reed Business Information Ltd, Reed Elsevier (Uk) Ltd, Totaljobs Com Ltd CA 3-Mar-2004
The claimant alleged trade mark infringement by the respondents by the use of a mark in a pop-up advert.
Held: The own-name defence to trade mark infringement is limited. Some confusion may be allowed if overall the competition was not unfair . .
Cited – Hotel Cipriani Srl and Others v Cipriani (Grosvenor Street) Ltd and Others CA 24-Feb-2010
The claimants owned Community and UK trade marks in the name ‘Cipriani’. The defendants operated a restaurant in London using, under the licence of another defendant, the same name. The claimant sought an injunction to prevent further use of the . .
Lists of cited by and citing cases may be incomplete.
Updated: 29 June 2022; Ref: scu.170095