A business had grown, but the two founders split, and set up separate business. There was no agreement as to the use of the trading names and trade marks. The original law of Trade Marks prohibited bare exclusive licenses, licences excluding the rights of the owner to use the mark, and with no quality control. Such licences can be deceptive as to the origin of goods, but commercial practice has moved on. The case must be referred to the European Court of Justice to establish whether the law should now permit such bare licences where they can no longer be seen to be misleading. The ‘better view is that a company can claim the protection of this provision’ protecting use of its own name..
Lord Nicholls, Lord Steyn Lord Hobhouse of Wood- Borough Lord Millett Lord Scott of Foscote
 UKHL 21,  2 CMLR 30
Bailii, House of Lords
Trade Marks Act 1994, 1988 E C Trade Marks Directive (89/104)
England and Wales
Cited – Viho v Commission ECJ 24-Oct-1996
Cited – Centrafarm Bv and Others v Winthorp Bv ECJ 31-Oct-1974
(Free Movement Of Goods) . .
Cited – CNL-SUCAL v HAG (HAG 2) ECJ 17-Oct-1990
Europa Free movement of goods – Industrial and commercial property – Trade mark – Similar products protected in different Member States by identical marks or marks liable to be confused belonging to two entirely . .
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 – Glaxo Group Limited and Others v Dowelhurst Limited and Another ChD 28-Feb-2000
Parallel importers could not be prevented from so acting by Trade Mark law unless it could be shown that the activity caused substantial damage to the specific substance of the Mark. If damage was shown, the owner could complain unless it would . .
Appeal from – Scandecor Development Ab v Scandecor Marketing Ab and Another (No 2) CA 7-Oct-1998
Actions for passing off and Trade Mark infringement tended to end up as factual disputes resolvable only after a full enquiry. ‘Not a branch of law in which references to these cases is of an real assistance.’ . .
Cited – Regina v Johnstone HL 22-May-2003
The defendant was convicted under the 1994 Act of producing counterfeit CDs. He argued that the affixing of the name of the artist to the CD was not a trade mark use, and that the prosecution had first to establish a civil offence before his act . .
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 . .
These lists may be incomplete.
Updated: 06 January 2021; Ref: scu.162922