Friday, 10 June 2011

Informal licences and oral use of trade marks

Prudent trade mark owners don't let others use their trade marks without taking precautions, but in Jean Christian Perfumes Ltd & Anor v Thakrar (t/a Brand Distributor or Brand Distributors Ltd) [2011] EWHC 1383 (Ch) the High Court (Mr John Baldwin QC, sitting as a deputy judge of the Chancery Division) held that even where the licence had been granted orally the licensee could bring an action for infringement if he had the consent of the proprietor.

The case concerned a Community trade mark: there is no reason to suggest that a UK trade mark would be treated any differently. This ruling could be very useful where the proprietor of the trade mark is overseas and might therefore be required to give security for costs before being able to sue for infringement. A licensee using the trade mark here, even without a formal written licence, could bring the action instead.

There was also a point in the case about whether non-graphic use of a trade mark could be infringement. The deputy judge observed that as the Community trade mark regulation provides for the registration of such exotic, non-graphic, marks as sounds, it would be absurd if oral use were not capable of being an infringement. I have always understood that the 1994 Act widened the scope of what amounts to infringement to include oral use, although I believe it's not expressly stated on the face of the statute - it's just that the Act doesn't say infringing uses have to be graphic. And quite right too: mention of a trade mark in a TV or radio programme should, if the relevant conditions are met, amount to an infringement.

The logical extension of these principles is that oral use of a trade mark will be enough to overcome a claim of non-use. Just hard to prove.

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