'Trade Mark Use' in Infringement of Trade Marks under the Trade Marks Act 1994

Abstract

Section 10 of the Trade Marks Act 1994 of the UK and Article 5 of the Trade Marks Directive prohibit 'use of a sign' not 'trade mark use'. In this regard such wordings have given rise to the question of whether any use in commerce suffices for infringement or whether the requirement of 'trade mark use' as opposed to 'descriptive use' should be retained. To solve this problem, it is necessary to discuss the UK courts' positions under the previous trade mark acts and the European Court of Justice's decisions under the EU Trade Marks Directive, in particular the decision in Arsenal case. Because there is a conflict of interests between trade mark proprietors, competitors and consumers, making clear of the concept of 'trade mark use' will contribute to balancing the interests of the concerned parties.

Keywords: trade mark use, Arsenal, EU Trade Marks Directive, Trade Marks Acts 1994