Trade mark invalidity

In accordance with English trade mark law, a registered trade mark could be invalidated if it falls foul of the absolute grounds of refusal or the relative grounds of refusal.

What is invalidation?

An invalidation is a legal procedure carried out by a third party applicant to invalidate an individual or businesses trade mark. There are two ways an applicant could apply to invalidate a trade mark: 1. The applicant could contend that the application is invalid under the absolute grounds or 2. the applicant could contend that the that the application is invalid under the absolute grounds. An applicant could seek to invalidate a trade mark in its entirety or apply to invalidate/restrict some of the goods and services of the mark.

Invalidity under the absolute grounds

An application made under the absolute grounds is on the basis of the flaws/defects in the trade mark itself and can be made by any third party regardless of whether they have an interest in the mark. Examples of a defected mark include generic marks and marks that are descriptive of the goods and services. It is important to note however that if a trade mark was distinctive at that date it was registered or it has acquired distinctiveness since the date of registration, then the application for a declaration of invalidity may fail.

Invalidity under the relative grounds

An application to invalidate a mark under the relative grounds is made if the applicant believes there is an earlier trade mark or earlier right (including unregistered rights) owned by the applicant. Unlike invalidation applications made under absolute grounds, an application made under relative grounds can only be applied for by the owner or representative of a UK trade mark and not a third party.

Making an application to invalidate

If you want to make an application to invalidate a mark, a TM26(I) application must be filed with the United Kingdom Intellectual Property Office accompanied by a fee of £200.00. An application made under the absolute grounds can be made by any third party, individual or representative whereas an  application made under the relative grounds can be made by a trade mark owner or representative only.

If you have any questions relating to this article or have discovered a registered trade mark that you wish to invalidate, contact the experts at Lawdit Solicitors today.

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