Once a trade mark has been registered, the grant of intellectual property rights is not unconditionally perpetual. Trade mark owners should guard against matters which threaten the continuation of the registration and being struck off the Register by competitors.
Most people are aware that a registered trade mark in the UK creates monopoly rights over the goods and services that appear in the specification on the Register of Trade Marks. Once a trade mark is registered, it does not mean that it creates perpetual rights for all purposes. To be registered in the first instance, a trade mark must be a distinctive badge of origin in respect to the goods and services specified in the trade mark. This distinctiveness must be maintained to justify keeping the trade mark on the Register.
Failing this, the trade mark becomes susceptible to revocation and removed from the Register by any person who is affected by its continued existence on the Register. This becomes an important issue when another person applies for a similar – or even the same – trade mark in respect to similar goods or services. If the proprietor cannot successfully defend proceedings for revocation or invalidity, the newer mark will proceed to registration, thus defeating the purpose of applying for the trade mark in the first place.
Businesses owners may mitigate the risk of a challenge to the continued existence of their trade mark of the Register by applying for the invalidity or revocation of a trade mark.
There are four ways by which a trade mark may be removed from the Register, either voluntarily or involuntarily:
Section 47 of the Trade Marks Act 1994 (‘the Act’) deals with the declaration of invalidity of a trade mark on the grounds that it has been invalidly registered.
“47.- (1) The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of section 3 or any of the provisions referred to in that section (absolute grounds for refusal of registration).
Where the trade mark was registered in breach of subsection (1)(b), (c) or (d) of that section, it shall not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered.
(2) The registration of a trade mark may be declared invalid on the ground-
(a) that there is an earlier trade mark in relation to which the conditions set out in section 5(1), (2) or (3) obtain, or
(b) that there is an earlier right in relation to which the condition set out in section 5(4) is satisfied, unless the proprietor of that earlier trade mark or other earlier right has consented to the registration.”
Essentially there are three situations in which a trade mark can be held to have been invalidly registered.
A trade mark will be declared invalid if it was registered in contrary to the provisions of s.3 of the Act, except where the ground for invalidity relates to s.3(1)(b)-(d) and the mark has “acquired a distinctive character in relation to the goods or services for which it is registered” after registration.
Under s.5 of the Act which also outlines the relative grounds for refusal, a mark will be declared invalid where there is a conflict with an earlier trade mark or right. Although this may be overcome where the proprietor of that earlier mark or right gives their consent to the registration of the later mark, that is, grant a licence to use the mark.
Under s.47(4), where a trademark is registered in bad faith, it may declared invalid. What constitutes ‘bad faith’ has been considered in a number of cases and generally means for dishonest behaviour: Gromax Plasticulture Ltd v Don & Low Nonwovens Ltd (1999). For instance the applicant does not own the mark in question (Mary Wilson Enterprises’ Trade Mark (2003)), or where the proprietor of the mark has no intention of using it or does not use it in relation to the goods or services covered by registration (Avnet v Isoact (1998)).
Under s.47(5), invalidity may be partial and the part of the registration which is not affected remains valid and enforceable.
“(5) Where the grounds of invalidity exists in respect of only some of the goods or services for which the trade mark is registered, the trade mark shall be declared invalid as regards those goods or services only.”
Anyone can apply to have a trade mark declared invalid any time after registration of the mark.
The consequence of a declaration of invalidity is that the trade mark is deemed never to have been registered and infringement proceedings can cover the period of invalidity. However, this is subject to the proviso under s. 47(6) that “this shall not affect transactions past and closed”. This may give rise to a retrospective right to infringement by person.
Section 46 of the Act deals with orders for revocation of a trade mark.
“46. - (1) The registration of a trade mark may be revoked on any of the following grounds-
(a) that within the period of five years following the date of completion of the registration procedure it has not been put to genuine use in the United Kingdom, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use;
(b) that such use has been suspended for an uninterrupted period of five years, and there are no proper reasons for non-use;
(c) that, in consequence of acts or inactivity of the proprietor, it has become the common name in the trade for a product or service for which it is registered;
(d) that in consequence of the use made of it by the proprietor or with his consent in relation to the goods or services for which it is registered, it is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services.”
Where revocation is concerned, validity is not an issue except that the trade mark will remain valid until revoked. There are various situations where a mark may be removed from the register:
This situation incorporates lack of genuine use in relation to s.47(1)(a) and (b) of the Act.
In the case of Ansul BV v Brandbeveiliging BV Case C-40/01 11 March 2003 (unreported), on the issue of ‘genuine use’, the ECJ ruled:
“There is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or service for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark.”
Where a proprietor of a trade mark has not genuinely used their mark for five years since it was registered or use of that mark has been suspended for an uninterrupted period of five years, this may cause the mark to be revoked.
One of the main reasons for lack of genuine use is where the proprietor of the trade mark does not use it in relation to the goods or services for which it is registered. This usually happens where the mark is registered in relation to a large number of different classes of goods and services.
In the case of British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281, Jacob J said:
“When it comes to construing a word using in a trade mark specification, one is concerned with how the product is, as a practical matter, regarded for the purposes of trade. After all, a trade mark specification is concerned with use in trade.”
Thus, it is imperative that a registered trade mark is used in the manner that it is registered during the first five years of registration in respect to each of the classes of goods and services in which it is registered.
Where a trade mark has become generic, whether or not through use, it may be revoked.
Typically a trade mark becomes generic where (although distinctive when it was first registered) it is used extensively in the market as the name for goods and services. For example, the trade mark “Vaseline” entered common parlance to mean petroleum jelly, and thus became a generic term meaning petroleum jelly. The trade mark lost its distinctiveness as a result and was struck off the Register of Trade Marks.
A trade which misleads the public as to the nature, quality or origin of the goods or services in respect of which it is registered may be revoked under s.46(1)(d).
Revocation, like invalidity, may be in relation to only part of the registration.
When a trade mark is revoked it is removed from the register and is no longer protected, however the proprietor will not be liable for any acts of infringement which occurred when the mark was registered.
Section 45 of the Act deals with the surrender of trade marks.
“45. - (1) A registered trade mark may be surrendered by the proprietor in respect of some or all of the goods or services for which it is registered.(2) Provision may be made by rules-
(a) as to the manner and effect of a surrender, and
(b) for protecting the interests of other persons having a right in the registered trade mark.”
The proprietor of a registered trade mark is entitled to surrender that mark, either in its entirety or partially.
An example of the surrender of a mark is when the proprietor assigns the trade mark, or grants a licence for someone else to use it.
Trade marks are registered for 10 years at a time and can then be renewed. Trade marks which are not renewal lapse will be lost when it expires. Limited grace periods apply for those late renewing their trade marks.
If registration of a trade mark is not renewed after 10 years, the proprietor has six months to renew it before it is removed from the register. However, even after it has been removed from the register, it can be restored if an application is made within six months of removal provided the registrar is satisfied that it is just to do so.
Trade mark rights require maintenance and third parties’ use of trade marks without permission ought to be policed. Failure to do so will result firstly in the dilution of the distinctiveness of the trade mark (which is contrary to the purpose of applying for the trade mark in the first instance), and secondly the trade mark becoming susceptible to a claim for revocation.
As brands are the feature of a business than renders them distinctive from all other businesses, it makes sense to put third parties on notice that it requires them to cease and desist using their intellectual property rights and preserve their brand identity to avoid confusion in the market as to the source of the businesses’ goods and services.
For business legal advice and more information on revocation, invalidity of registered trade marks and trade mark disputes, contact us online or call us on 020 7353 1770.
