This article complements a previous article on trade mark invalidity proceedings.
Revocation of a trade mark occurs where the trade mark owner (or their licensee) is stripped of their trade mark as a result of their acts or omissions. There are four grounds upon which revocation proceedings may be initiated:
- Where there has been no genuine use of the mark in the first five years following registration;
- Where there has been no genuine use of the mark for a continuous five year period;
- Where the trade mark owner has used the mark in such a way that the mark has become generic; or
- Where the manner of the use of the mark is liable to mislead the public.
An application for revocation on the basis of non-use places the burden on the trade mark owner to prove that the mark was used or that there are proper reasons as to why the mark has not been used. If successful, the trade mark will be deemed revoked from the date of the application for revocation, as per section 46(6) of the Trade Marks Act 1994 and Article 55(1) of the Community Trade Mark Regulation.
Genuine use of a trade mark
The function of a trade mark is to guarantee the origin of goods or services used under that mark and genuine use must be judged in accordance with this. A trade mark which is used very little may still fall within the definition of genuine use, providing that such use serves a real commercial purpose and is not being used for the purpose of maintaining a trade mark registration.
Case law has not quantified the threshold for genuine use and this is only one of many factors which are taken into consideration when assessing an application for revocation. Each case will invariably turn on its own merits.
Notwithstanding the above, a trade mark will not be revoked if there are proper reasons for its non-use. By way of guidance, situations where it would be impossible or unreasonable to use the mark will constitute a proper reason for non-use, whereas commercial difficulties will not. A trade mark owner who has agreed with a third party to stop using its mark will also not been deemed to have a proper reason for non-use.
Trade marks which become generic
Whilst trade marks may become commonly used in place of their types of goods, there have been instances where owners have allowed their marks to become generic and have had their marks revoked as a result.
Owners should ensure their trade marks stand out from accompanying text and that their registered trade marks are always accompanied by the ® symbol. (Unregistered trade marks should be accompanied by the ™ symbol). In the case of a trade mark which has been licensed to a third party, a statement should accompany use of the mark, stating that it is used under licence and identifying the licensor. Any unauthorised use should also be dealt with without delay.
Trade marks which mislead the public
Revocation proceedings are rarely brought in respect of marks which mislead the public, although they are most likely to be initiated where the trade mark is used to infer a non-existent quality of an incorrect geographical origin of goods or services.
By Aasim Durrani. Aasim is a Trainee Solicitor and can be contacted on email@example.com
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