Invalidity and revocation

Invalidity and revocation

Contents

Invalidity

A registered trade mark can be declared invalid in its entirety, or partially invalid (that is, in respect of either all or some of the goods or services for which it is registered) if it should not have been registered on the basis either of an absolute or relative ground, or where the trade mark was registered in the name of an agent or representative of the true owner.

Invalidity based on earlier rights in a registered mark is subject to the earlier mark having been put to genuine use during the five years preceding the invalidity application (unless there are proper reasons for non-use).

An invalidity application is often made as a counterclaim in infringement proceedings; i.e. the alleged infringer seeks to defeat the infringement claim by trying to get the trade mark declared to be invalid.

Status to apply

Any person can apply to have a UK trade mark declared invalid on absolute grounds. However, only the owner of an earlier mark or right can bring an application for invalidity on relative grounds.

The position is similar for EUTMs: anyone can apply to have an EUTM declared invalid on absolute grounds, but applications on relative grounds are the preserve of those who have an interest, such as the owner and licensees. More specifically, an application for a declaration of invalidity based on absolute grounds can be made by any natural or legal person and 'any group or body set up for the purpose of representing the interests of manufacturers, producers, suppliers of services, traders or consumers, which has the capacity in its own name to sue and be sued'. In contrast, applications for a declaration of invalidity based on a relative ground of invalidity may only be made by certain specific persons, such as licensees, who have an interest in bringing proceedings.

Relevant date for assessing whether grounds apply

The relevant date for assessing the validity of a trade mark is its application date. In relation to acquired distinctiveness, distinctiveness acquired between the application date and the date of registration cannot be taken into account.

Further, the conditions for invalidity on relative grounds must be fulfilled at the filing date or priority date of the later mark. This means in practice that the earlier mark relied on by the owner seeking invalidity must have sufficient distinctiveness or reputation on the date when the later (challenged) mark was filed (or, if the later mark claimed priority, on the relevant priority date).

Effect of acquiescence

A person cannot apply to have a later-registered mark declared invalid on relative grounds if they have acquiesced for a five-year period in the use of that mark, unless it was registered in bad faith.

The prerequisites for the start of the five-year period are:

  • Registration of the later trade mark in the member state concerned
  • The application for registration of that mark having been made in good faith
  • Use of the later trade mark by its owner in the member state where it has been registered
  • Knowledge on the part of the owner of the earlier trade mark that the later trade mark has been registered and used after its registration

Also, the owner of an earlier trade mark cannot obtain the cancellation of an identical later trade mark designating identical goods where there has been a long period of honest concurrent use of those two trade marks and where that use neither has, nor is liable to have, an adverse effect on the essential function of the trade marks, which is to guarantee to consumers the origin of the goods or services.

Revocation

There are four potential grounds for revocation:

  • There has been no genuine use of the mark, either by the owner or any licensee, for the first five years following the completion of the registration procedure (that is, the date of its actual entry on the register) and there are no proper reasons for non-use.
  • There has been no genuine use of the mark for a continuous five-year period, and there are no proper reasons for non-use.
  • Due to the owner's acts or inactivity, the mark has become the common name in the trade for a product or service for which it is registered.
  • Due to the way the proprietor has used the mark, or the way someone else has used it with their consent, in relation to the goods or services covered in the registration, the mark is liable to mislead the public, particularly as to the nature, quality or geographical origin of the goods or services.

Once an application for revocation on grounds of non-use has been filed, the owner must provide evidence of genuine use, or alternatively show that there are proper reasons for non-use.

As is the case for invalidity, a mark can be revoked wholly or partially: that is, in relation to some or all of the goods and/or services listed in the specification.

The approach of UK courts in partial revocation cases is that the court should first identify the goods or services in relation to which the mark had been used, and then consider how the average consumer would fairly describe them. In doing so, it must have regard to the categories of goods or services for which the mark was registered and the extent to which they were described in general terms. If the categories were described in terms which were sufficiently broad to allow within them various sub-categories which were capable of being viewed independently, then proof of use in relation to only one or more of those sub-categories would not constitute use of the mark in relation to all the other sub-categories. This meant that protection must not be cut down to those precise goods or services in relation to which the mark had been used. This would strip the owner of protection for all goods or services which the average consumer would consider belonged to the same group or category as those for which the mark has been used and which were not in substance different from them.

The General Court of the EU has held that if a trade mark has been registered for a category of goods or services which is sufficiently broad to contain several identifiable sub-categories, proof that the mark has been put to genuine use in relation to a part of that specification will defeat a non-use action in relation to that part only. In contrast, if the mark is registered for a very narrow category which cannot be sub-divided, proof of genuine use will cover that entire category.

Effective date of revocation

When the registration of a trade mark is revoked, the owner's rights cease from the date of the application for revocation, unless the applicant states (and the registrar or court accepts) that an earlier date should apply.

In applications for revocation on the grounds of non-use, the earliest date from which revocation can take effect is:

  • the day following the fifth anniversary of completion of the registration procedure if the non-use relates to the first five years following the completion of the registration procedure; or
  • the fifth anniversary of the date when use is alleged to have ceased if the non-use relates to a subsequent, continuous five-year period.

Genuine use

The general principle is that genuine use arises where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered in order to create or preserve an outlet for those goods or services. Token use, in order to preserve the rights conferred by the mark, would not be genuine use, but a small amount of use might be sufficient as long as it served a real commercial purpose.

When assessing whether the conditions are, account must be taken of all the relevant facts and circumstances, including the characteristics of the market concerned, the nature of the goods or services protected by the trade mark and the territorial extent and the scale of the use as well as its frequency and regularity. The geographical location of use is only one of the factors that a national court should take into account when assessing whether that use is genuine.

Proper reasons for non-use

The concept of proper reasons refers essentially to circumstances unconnected with the trade mark owner which prohibit them from using the mark, rather than to circumstances associated with any commercial difficulties they are experiencing.

Generic use

To minimise the chance of a revocation action succeeding on the basis of a mark having become the common name in the trade for a product or service for which it is registered, owners need to take care that their marks do not become generic: examples of marks which have become generic are 'Escalator' for a moving staircase and 'Linoleum' for floor coverings.

Marks usually become generic because the owner themselves has used the mark as the product name or has allowed others to do so. Trade mark owners should ensure that all employees and licensees and any other persons permitted to use the mark observe certain basic guidelines, including the following:

  • Marks should always be differentiated in text from any accompanying wording, for example, by using capital letters, underlining or inverted commas
  • Marks should always be used as adjectives, never as a noun or verb
  • Spelling of a word mark should be consistent in all written documents and, where a device and word form one registration, they should not be used separately unless they are also registered separately
  • Use should be made of the symbols ™ (for unregistered trade marks) and ® (for registered trade marks). Both symbols act as notice to third parties of an owner's rights
  • Any misuse of the mark in the media, or in trade catalogues and directories, should be dealt with promptly and firmly

The words 'in the trade' do not rule out revocation where the name has become commonplace only among consumers or end-users of the product (and not among producers and distributors of it). 'Inactivity' is a wide concept that covers more than just a failure to sue infringers, extending, e.g., to circumstances where the trade mark owner has failed to ensure that producers and distributors inform their customers of the trade origin of the product in question.

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