An action to have a trade mark declared invalid is a powerful tool. Many trade mark proprietors will be of the opinion that once a trade mark is registered thatÂs it Â the right is granted and providing renewals are kept up with, no third parties can object to the registration. The simple fact is that all trade marks are susceptible to attack. Â
Trade mark invalidation is a process whereby a party may seek to have a registered trade mark removed from the register as if the trade mark was never entered onto it. Â
A trade mark invalidation action can be based on section 3 or 5 of the Trade Marks Act 1994 (Âthe ActÂ).
An action under section 3 relates to something about the trade mark its self that makes it an unsuitably registered trade mark e.g. the trade mark may be devoid of any distinctive character or descriptive of the goods and/ or services applied for.
Whereas an action under section 5 relates to the trade mark in question infringing on the invalidation applicantÂs trade mark or rights. E.g. the trade mark may be similar or identical to a prior trade mark.
An application for invalidity can be made any point after the trade mark in question has been registered. The process is kicked off with the invalidity applicant filing a form TM26(I) and a statement of grounds that sets out the basis for the action. The proprietor will then have an opportunity to file a defence.
If successful the trade mark in question will then be removed from the register as if it never existed.
If you are looking to have a trade mark declared invalid, why not give Lawdit a call for help who can guide you through the process.