In a High Court judgment this month, BDO Unibank, the largest bank in the Philippines, successfully used the 'own name defence' in response to infringement proceedings. The proceedings were brought on behalf of the BDO network of accountancy firms which owns Community trade marks for 'BDO'.
The claimant network claimed infringement under Article 9(1)(a) of the Community Trade Marks Regulation in respect of some of the defendant bank's uses of the identical sign, BDO. This type of infringement does not require a likelihood of confusion to be proved, but it does require you to prove that one of the functions of the mark has been harmed.
The defendant admitted that if the uses complained of had occurred in the EU then there had been harm. It disputed, however, that such use had occurred and also said that if it were wrong then it could take advantage of the own name defence.
The so-called own name defence in Article 12 of the Community Trade Marks Regulation specifies that a trade mark cannot be used to prevent a person from using his own name, provided he uses it in accordance with honest practices. The equivalent for UK trade marks is section 11 of the Trade Marks Act 1994. As made clear by the Court of Appeal in Hotel Cipriani srl v Cipriani (Grosvenor Street) Ltd, the own name defence can apply to corporate or trading names, as well as personal names.
While this defence is raised relatively frequently, it is rarely successful. This is because the cases tend to concern the use of a corporate or trading name which has been adopted after the date of the trade mark's registration. If a trader commenced use of a name when it knew of a likely objection by the owner of a pre-existing trade mark, or would have had it conducted trade mark searches and/or taken legal advice and it should have taken such steps, it is likely to be considered not to be acting in accordance with honest practices. If so, the defence fails.
In this case, the judge considered the defendant ought to have known about the claimant's trade marks. However, here the defence was successful because (i) the defendant would not have known the claimant would likely take issue with its use of 'BDO', or (ii) its use was nevertheless in accordance with honest practices, since there was no likelihood of confusion between its use of 'BDO' in context and the claimant's mark.
The finding of no likelihood of confusion means this case is unlikely to open the floodgates for successful own name defences. This judgment related to one of many court cases and oppositions ongoing between the parties in more than 40 countries. As the judge put it, "The situation cries out for the negotiation of a global... co-existence agreement".