Relative grounds and the s.11(1) defence - the UK-IPO responds

The IPKat's mailbox has been flooded with emails responding to his post yesterday about the role of s.11(1) TMA 1994, including this comment from the people at the UK-IPO working on the legislative side of the relative grounds changes:

"On the continued relevance of the Section 11(1) defence, it is worth noting firstly that the registrar will continue to check for earlier trade marks and will advise the applicant and other interested parties of the results of a considered search. Applicants will therefore know if they are proceeding at their own risk.

Secondly, section 11(1) is subject to section 47(6). The net result is that if the registration of a mark is declared invalid, the defence disappears. Accordingly, section 11(1) does not and never did offer any indemnity against the results of use of the mark. This is also clear from section 2(2) of the Act. If it did it would be contrary to the Trade Marks Directive which sets out the defences to infringement in an exhaustive manner. In principle, registration provides a sword and not a shield. In practice, it also provides a shield against claims based on later conflicting trade marks. This is because, in the event of a conflict and subject to the rules on acquiescence, the owner of an earlier mark retains the tools to invalidate a later conflicting mark.

What section 11(1) does mean is that the owner of an earlier conflicting mark will have to show that a later national mark was invalidly registered before being able to succeed in a claim that the use of that mark infringed his earlier mark.

However, where the infringement is because of an alleged likelihood of (or actual) confusion, the factual conditions for establishing infringement will be the same as the factual conditions for making good an invalidation application. Consequently, there is no inconsistency between the section 8 Order and the continuance of the section 11(1) defence. That is why section 8 made no provision for the Secretary of State to disapply section 11(1) as a consequence of making such an Order."

The IPKat also thanks those practitioners who've written in and have left comments to similar effect. However, he finds the second point rather surprising. It seems to be saying that s.11(1) was never very useful, and in any event, if it did provide a defence, this would be in breach of the Directive. Well what was it doing there in the first place then? The IPKat acknowledges that s.11(1) never provided perfect protection, because there was always the possiblity of invalidating the later conflicting trade mark. However, an invalidity action before the Registry (possible under s.11(1)) is a rather different proposition from an infringement action before the courts (impossible under s.11(1)), even if the net result of both types of action is that you can't use the conflicting later mark.