How to cancel a trade mark

Collectively the reference for the cessation of trade mark rights is “cancellation”.Â

A trade mark can be cancelled in 4 waysÂ

1. Expiry. 2. Surrender. 3. Revocation. 4. Declaration of invalidity.

Let us take a look at invalidity.Â

A trade mark may at any stage be invalidated if it fails to tick the boxes on absolute grounds as referred to in section 3 of the TMA and Article 7 of the CTM Regulation.

In short it should never have been registered in the first place, and it cannot argue that it has acquired distinctive character through use for the relevant goods or services (section 47(1), TMA and Article 52(1)(a), CTM Regulation).

3 Examples:

• Francis Geoffrey Bignell (trading as Just Employment (a firm)) v Just Employment Law Limited, [2007] EWHC 2203 (Ch), in which the High Court upheld a counterclaim and that JUST EMPLOYMENT lacked inherent distinctiveness and had failed to acquire distinctiveness.

• Lego Juris A/S v OHIM and MEGA Brands, Inc., Case C-48/09 P, in which the ECJ followed the Philips case so as to hold that a trade mark consisting of the shape of a Lego brick was invalid under Article 7(1)(e)(ii).

• Starbucks (HK) Ltd and others v British Sky Broadcasting Group plc and others [2013] EWCA Civ 1465, in which the Court of Appeal held that the signs NOW and were invalid in respect of telecommunication services because the word “now” would be understood by the average consumer as a description of a characteristic of the service, namely its instant nature.

Jasper Holness

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