Normally, if you use your own name, you don’t infringe a trade mark. However, such use has to be “in accordance with honest practices in industrial and commercial matters”.
The defendant here found that this is not a “get out of jail free card”. Using another person’s trade mark in your company name may get you into deep water. The person who set up the company had been aware of the existence of the claimant before incorporating it and did not carry out a trade mark search. The claimant objected very shortly after the company started trading. At that time the company website was still under construction, its brochure had not yet been printed, and the company’s registered name was used for its services, not just as mere formal identification.
That meant the defendant had not discharged its duty to act fairly in relation to the legitimate interests of the claimant; its use of the name amounted to unfair competition, and infringed the claimant’s trade mark.
The lesson is that it is now easier for trade mark owners to overcome this “own name defence”, but better still, keep a watch on what other people are doing; and for new businesses – carry out a trade mark search.
Och-Ziff Management Europe Ltd & anor v Och Capital LLP & anor (2010)