The practice of a claim of infringement of trade
mark by using the sign as a trade or company name used to mean that proprietors
of trade mark were not able to successfully sue a company for using its sign as
a company name or use it as a trade. This was because it was established practice
that a company should not be prevented from using its own name, provided that
the name was innocently or honestly used during trade. This was known as the “own
defence”. The law on the own defence is set out as follows “A community trade mark shall not entitle the proprietor to prohibit a
third party from using in the course of trade…his own name or address…provided he
uses them in accordance with honest practices in industrial or commercial matters”1

The application of this practice
meant that an owner of a trade mark had no protection against infringement by
use of name in the course of trade if another company used a confusingly
similar name and that it was proven that the company was using its own name in
good faith. Furthermore, if a business could demonstrate that that there is no
confusion amongst customers and that the goods or services could not be identifiable
to be associated with the source of the trade there was no infringement ie distinctiveness.
Although the law was quite robust in its application to finding a decision of infringement,
this did not mean that businesses were able to use the defence per se. Business’s
who argued the defence would have to demonstrate that they carried out thorough
checks and searches before they used the sign as their domain name or used it
as their brand name. Businesses also had to demonstrate that the name (used) was
somehow linked to the trade or business and that customers were not likely to
be confused as to the origin of the mark.

The robust approach
of the law in its application can be illustrated in Roger Maier and Assos of Switzerland SA
–v- ASOS plc and ASOS.com Limited

1