3 ms·

Certainly in the UK, it's a defence to use a trade mark in good faith in a descriptive manner. I think this would be a solid defence in this case as the usage i

by grabeh 14y ago

Certainly in the UK, it's a defence to use a trade mark in good faith in a descriptive manner. I think this would be a solid defence in this case as the usage is merely describing the character (I assume). Of course the problem is internet intermediaries who are not interested in the nuances of trade mark law. In the first instance, I would look to appeal the Amazon decision on the basis of good faith descriptive usage. I'm not sure how much mileage there would be on this due to the general lack of interest mentioned above but worth a try all the same. If it is indeed Amazon UK where the complaint has been lodged I'd be happy to look into the matter further. In terms of an obligation to defend a trade mark, this is a narrower obligation than is being cast elsewhere in the thread. My understanding is that if you do not enforce in relation to a specific use, you will be deemed to have acquiesced in that specific usage. It is not the case that failing to take action against all allegedly infringing uses will result in revocation of the mark. You just may not be able to take action in the future against the same offender or offenders within the same bracket.

jellicle 14y ago
> Certainly in the UK, it's a defence to use a trade mark in good faith in a descriptive manner. Using it in a descriptive manner is something like: "I have here for sale two boxes of Kleenex tissues and one box of Band-Aid bandages and one Warhammer 40K rulebook." You are not infringing any trademarks, even though you are using the trademark in commerce, because you do in fact have those things (as created by the original maker, and resold by you). You are using the trademark to describe goods, not to indicate that you are the original producer of said goods. The usage here is entirely different. She is not claiming anything about any actual Warhammer 40K merchandise. You're right that the trademark claim is crap, but not for this reason.
- grabeh 14y ago
  I would argue that in the UK, s11(2)(b) of the Trade Mark Act could be used to make my argument. The book features a marine who is in space aka a space marine. The usage is necessary to describe the product. Admittedly this may be a tricky one to run. Your point is more about exhaustion of right where goods have been put on the market with the owner's consents. In the UK, this would be covered under s.12 of the above act.

by grabeh 14y ago

jellicle 14y ago

> Certainly in the UK, it's a defence to use a trade mark in good faith in a descriptive manner. Using it in a descriptive manner is something like: "I have here for sale two boxes of Kleenex tissues and one box of Band-Aid bandages and one Warhammer 40K rulebook." You are not infringing any trademarks, even though you are using the trademark in commerce, because you do in fact have those things (as created by the original maker, and resold by you). You are using the trademark to describe goods, not to indicate that you are the original producer of said goods. The usage here is entirely different. She is not claiming anything about any actual Warhammer 40K merchandise. You're right that the trademark claim is crap, but not for this reason.

grabeh 14y ago
I would argue that in the UK, s11(2)(b) of the Trade Mark Act could be used to make my argument. The book features a marine who is in space aka a space marine. The usage is necessary to describe the product. Admittedly this may be a tricky one to run. Your point is more about exhaustion of right where goods have been put on the market with the owner's consents. In the UK, this would be covered under s.12 of the above act.