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  • Rosie Burbidge

Do human rights impact trade mark law?


A November 2022 judgment in the English High Court addressed the interesting question of the interaction between the Human Rights Act and trade mark law (Enreach UK Ltd & Anor v Inreadh Group Ltd).


The case began as a conventional trade mark dispute. Enreach owns International Registrations for Enreach (as both word and figurative marks) in classes 9, 38 and 42. Inreach challenged these, based on conflict with its earlier mark InReach.


Enreach sought to invalidate the InReach trade marks on the ground that they conflict with an even earlier trade mark for Reach. However, this even earlier trade mark is owned by a separate company, Reach Digital Telecoms Ltd, which is not involved in the litigation.


Under Article 5 of the Trade Marks (Relative Grounds) Order 2007, only the proprietor or licensee of an earlier mark may make an application for a declaration of invalidity of a later trade mark based on its earlier mark. Enreach’s response to this hurdle was to argue that Article 5 should be disapplied as it infringes their rights under the Human Rights Act (HRA), which derive from the European Convention on Human Rights.


Inreach rejected that argument and sought strike out/summary judgment.


No interference

The judge, Deputy Judge Mr Nicholas Thompsell, concluded that the 2007 Order did not interfere with rights under the HRA. He said that Enreach were “unable to particularise that interference beyond a contention that the effect of the Order creates or increases a risk that proceedings made against them and their property will be successful”.


In his view, the 2007 Order does not create such a risk and in any case Enreach itself assumed that risk by adopting trade marks that may breach Inreach’s rights


Moreover, the effect on Enreach’s property is indirect, rather than direct, and “given the limited combination of circumstances in which the 2007 Order might have an effect on the Claimants' possessions that they say are put at risk (or increased risk), the potential for interference with the Claimants' possessions should be regarded as hypothetical and/or speculative.”


The judge said that the policy arguments supported his conclusion:

To disapply the 2007 Order would clearly impair the right of a State ‘to enforce such laws as it deems necessary to control the use of property in accordance with the general interest’. It would have the effect of impairing the right of the UK state to enforce its laws controlling the use of trade marks.”

Turning to Inreach’s application for strike out/summary judgment, the judge said he was satisfied that the court had all the evidence necessary for the proper determination of the question and the parties had had opportunity to address it in argument. He did not think there was any way that the particulars of claim could be modified and there was no real prospect of persuading a court that the 2007 Order must be disapplied by the court. Inreach was therefore entitled to summary judgment and/or striking out.


What this means

This was an ingenious attempt to invoke human rights to win a trade mark case. As readers may recall, it is not the first time that it has been argued that IP rights fall within the scope of the ECHR.


However, the judge clearly felt that the human rights argument was not relevant in this case. In fact, he even questioned whether it is actually the trade mark owner’s rights that are under threat.


The result is a sensible decision that maintains the balance in the Rules and confirms that only someone with a legitimate interest can challenge a trade mark owner’s rights.


To find out more about the issues raised in this blog contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - rosie.burbidge@gunnercooke.com


#HRA #ECHR #invalidation

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