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trade marks - own name defences can succeed!

5 March 2013

Defences to allegations of trade mark infringement where infringers says “I’m using my own name!” rarely succeed. So much so that commentators have challenged readers to come up with a list of any examples of success. But the High Court has bucked the trend in Stichting BDO and others v BDO Unibank, Inc and others.

The claimant is an international accountancy and professional services firm trading under the trade mark “BDO”. The successful defendant is a Philippine bank also trading under the “BDO” mark. By demonstrating it used BDO as its own name “in accordance with honest practices in industrial or commercial matters”, Unibank avoided trade mark infringement.

Whilst this decision is unlikely to spark a sea change, it should be noted when running such a defence. Businesses remain well advised to carry out detailed clearance searches when embarking on a re-branding programme, even if the brand contains reference to the business’ own name (be it a company or trading name).

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