Fettering: The UK Trade Mark Registry's Fugitive Doctrine

Abstract

Fettering, or inhibition, involves blocking the senior user’s ability to expand into new product classes. It is commonly believed that the Registry treats fettering as a relative ground for refusal under s.5(3) of the Trade Marks Act 1994. This comment examines the decisions on fettering, concluding that although many senior user have relied on the action, it has never been accepted by the Registry. However, there is some surprising evidence of its adoption by the Court of Appeal. The propriety of dealing with fettering as a form of dilution is also questioned since it does not fall within the categories of dilution recognised by the CJEU.

Keywords: trade mark, trademark, law, UK, fettering, dilution, Europe, registration

JEL Classification: K00, O34