Which Honesty Test for Trademark Law? Why Traders' Efforts to Avoid Trademark Harm Should Matter When Assessing Honest Business Practices

Abstract

This article argues that the honest practices proviso should be more empirically based. Judges should focus on the efforts made by the competitor to avoid detriment to the trademark and on whether consumers perceive the potentially infringing sign differently because of these efforts. If the defendant has taken sufficient measures to minimise possible harm to the trademark owner but some confusion still exists or some advantage is taken, the use of the trademark should be allowed when these side effects are outweighed by overarching market values, such as furthering freedom of competition and enhancing consumer information and consumer choice. This conduct-based approach ensures that not only the legitimate interests of the trademark owner but also those of third parties are taken into account. In this way, trademark owners cannot prevent honest use of the trademark if the defendant has taken sufficient efforts to minimise harm, and at the same time third parties must respect trademark owners' interests to the largest extent possible if they want the trademark limitations to apply.