Revocation of Trade Marks

What is trade mark revocation?

Revocation refers the legal process whereby a party applies to remove a registered trade mark or goods to which the trade mark relates from the Trade Marks Register at the IPO. (Intellectual Property Office).

There are two grounds for a party to bring revocation proceedings against a registered trade mark:

Non use

The applicant must be able to show

  1. That a registered trade mark has not been used on the goods or services it was registered for by the owner or a person authorised to use the mark, in the five years after registration
  2. and there are no valid reasons why the trade mark has not been used.

Grounds other than non-use

A party may claim that a trade mark has become ‘generic’, this means that the trade mark is a common name for the goods or services it is registered for, i.e. the following used to be registered trade marks but subsequently lost their legal protection because they became the common name for a relevant product or service:

  • Aspirin
  • Sellotape
  • Thermos
  • Escalator

A party may also file revocation proceedings if they have reason to believe that a mark is likely to mislead the public on matters such as the quality or geographical origin of the goods or services to which a mark relates.

Revocation claims likely to fail

In the Stefcom SpA’s Trade Mark case in 2005, an applicant sought to revoke the LELLIKELLY trade mark (those of you that are parents of young girls will be familiar with this mark). The owner of the trade mark had registered the mark in relation to clothing and footwear, the applicant in the case submitted that there had not been ‘genuine use’ of the mark in the five years proceeding registration.

The owner of the mark produced evidence that the mark had been used however the applicant maintained that this use did not amount to ‘genuine use’ and was merely token use.

The revocation application in this case was dismissed, on the grounds that although the owner had not used the mark to the extent that it became well known to the relevant class of consumers, it was sufficient for ‘genuine use’ that the mark had been brought to the attention of the relevant class of consumers.

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