Exploring Use of the Same Mark by Multiple Undertakings
Edited by IIanah Simon Fhima
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 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  FSR 31,  ETMR 47; Reed Executive plc...
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