Under English and European trade mark law, a sign which is able to distinguish the goods or services of one undertaking from another can be registered as a trade mark unless it falls foul of the absolute grounds of refusal or the relative grounds of refusal. Invalidity proceedings take place after the trade mark in question has been entered onto the trade marks register.
In practice, invalidity proceedings often arise in response to proceedings of infringement, whereby the defendant in the infringement proceedings will claim that the trade mark should never have been registered, usually in conjunction with a vehement denial of infringement, should the mark be deemed valid.
Invalidity under the absolute grounds
Anybody may apply to have a UK or European trade mark declared invalid under the absolute grounds, even where they do not have an interest in bringing proceedings. An application made under the absolute grounds will use the date of registration as the valid date. If the mark was distinctive at that date then the application for a declaration of invalidity will fail, notwithstanding the fact that the mark may have acquired distinctiveness since that date.
Invalidity under the relative grounds
Only the owner or a licensee of a UK or EU trade mark may apply to have it declared invalid under the relative grounds. An application made under the relative grounds will use the application date as the valid date, unless acquired distinctiveness is in issue. A trade mark owner who has acquiesced a subsequent trade mark registration for a period of five years is unable to have the trade mark invalidated. The exception to this rule is where the subsequent registration was made in bad faith.
A registered trade mark will be declared invalid if a third party owns earlier rights under UK or European law. Article 53(1)(c) of the Community Trade Mark Regulation states that an EU trade mark can be declared invalid on the basis of earlier rights which are of “more than mere local significance” and which can prevent use of the subsequently registered mark.
By Aasim Durrani. Aasim is a Trainee Solicitor and can be contacted on firstname.lastname@example.org
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