Exploring Use of the Same Mark by Multiple Undertakings
Edited by IIanah Simon Fhima
Chapter 3: The Rise and Fall of Honest Concurrent Use
Phillip Johnson 1. INTRODUCTION Over a hundred and thirty years ago trade mark registration began in the United Kingdom with the Trade Marks Registration Act 18751 and soon afterwards the problem caused by two people wanting to register an interest in the same mark arose. It therefore became necessary to address how these two people, who both had an interest in the mark, could ‘share’ the use of the mark without undermining the integrity of the trade mark itself, something which even prior to registration had been acknowledged as having the purpose of denoting the origin of the goods.2 The solution eventually adopted was the creation of the concept of the ‘honest concurrent user’ which provided a mechanism for two or more traders to register the same mark for the same goods (or services); once registered, concurrent users could sue third- party users, but not each other. This chapter begins by looking at the proposition by Lord Diplock that the rule began under the common law, but then moves on to suggest the more likely origins of the rule. The chapter concludes by looking at the rule’s evolution and eventually its slow death3 following the enactment of the Trade Marks Act 1994. 38 & 39 Vict. c. 91. See the definition of trade mark in section 1 of the Merchandise Marks Act 1862 (25 & 26 Vic. c. 88). 3 In the United Kingdom at least; the rule is still going strong in other Commonwealth jurisdictions: see section 44(3) of the...
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