Trade Mark Law and Sharing Names

Trade Mark Law and Sharing Names

Exploring Use of the Same Mark by Multiple Undertakings

Edited by IIanah Simon Fhima

There are a number of points throughout the trade mark system where multiple undertakings share the same name, either unwillingly, or by consent. In this timely book, expert contributors address this controversial issue and identify the various points at which names are shared. This unique book uses both historical and interdisciplinary perspectives, as well as more traditional legal methodology, to examine the practical and theoretical implications of such name sharing for the parties involved. It analyses what can be learned from the sharing process about the nature of the trade mark system and the interests which it protects. General themes relating to the nature and purpose of trade mark law are also discussed.

Chapter 8: Is There an Own-Name Defence in the Common Law Tort of Passing-off? The Implications of Asprey, Reed and Newman v Adlem

Christopher Wadlow

Subjects: law - academic, intellectual property law


Christopher Wadlow 1. INTRODUCTION That there is a defence of the use of one’s own name in the law of registered trade marks is plain on the face of the relevant legislation.1 In passing-off, however, the existence of the defence is anything but clear. It undoubtedly enjoyed some support in the nineteenth century, occasionally being asserted in terms which suggested it was something akin to an inalienable natural right.2 In due course we shall see something of this approach reasserting itself in the judgment of Arden LJ in the latest of the three recent Court of Appeal cases with which this chapter is principally concerned.3 In the intervening century, however, the defence has led a precarious existence, even by reference to the restrictive terms in which it had been restated by Romer J in Rodgers v Rodgers.4 1 Trade Marks Act 1994, s.11(2)(a) giving effect to the First Directive 89/104/EEC of the Council, of 21 December 1988, to Approximate the Laws of the Member States Relating to Trade Marks, Art. 6(1)(a); Council Regulation (EC) 40/94 of 20 December 1993 on the Community trade mark, Art. 12(a). See also Chapter 9 of this volume, which considers the subject in detail. 2 Burgess v Burgess (1853) 43 ER 90, especially per Knight Bruce LJ; Turton v Turton (1889) 42 Ch D 128, CA, especially per Lord Esher MR. 3 Asprey & Garrard Ltd v WRA (Guns) Ltd and Asprey [2002] FSR 31, [2002] ETMR 47; Reed Executive plc...

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