Trade Mark Invalidity Proceedings

Trade Mark Invalidity or Cancellation Proceedings

Even though you have registered your trade mark it may be possible for it to be removed as a result of a competitor filing an invalidation action against it.

There are two main ways in which a trade mark may be declared invalid, namely, absolute and relative grounds. With absolute grounds, the trade mark can be cancelled as the mark was descriptive of the goods and services which it covers, when it was initially registered. As for relative grounds, this applies when the trade mark conflicted with an earlier right which already existed when the application was going through the registration procedure.

Of course, you would expect that these issues would have been found at the application stage, but that’s not always the case. They may well only be identified after your mark has been registered. It could be the case that an owner of an earlier right might not have been made aware of your application until after it was registered. If this was the case, the only way to remove your trade mark would be to invalidate your registration.
If you have received an application for invalidity of your trade mark, get in touch, and we’ll help you find a resolution. Sometimes it is possible to settle a conflict without losing the trade mark entirely; if agreed with the party invalidating your trade mark, you can limit your registration by removing certain goods or services from the specification.

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How can I invalidate a trade mark?

There are certain growing industries where demand for pertinent trade marks can be high, for example vegan food, and various CBD products. It could be that you know a competitor’s registered trade mark was a descriptive term or generic term when it was registered, and that this was not picked up by the Intellectual Property Office when they examined the application. Alternatively, you may have had an earlier right which could have formed the basis of a successful opposition, but you missed the opposition deadline for the application. In both instances, you can do something about it by applying to invalidate the trade mark once it has been registered.

It is also possible to invalidate a registration for certain specific goods or services, rather than all the classes covered by the registration. You should also bear in mind that if you are applying to invalidate a registration on the basis of an earlier right, you can only do this if you own the relevant right, or if you are a licensee of that trade mark.

Ward Trade Marks can help you with an opinion on the likely success of your invalidation action before it is filed, ensuring that you direct your resources towards only invalidating those marks which are real problems for you, and that any invalidation action is likely to work.

Free Guide: Everything A Business Owner Needs To Know About Trade Marks

The guide will explain to you in detail the essentials of trade mark protection including:-

  • Choosing a distinctive brand name – why a good choice will resonate with your customers and reduce your advertising and marketing spend.
  • The importance of avoiding the descriptive/ generic trade mark trap.
  • The importance of pre-filing searches – done the correct way – to avoid future legal action against you and the risk of having to rebrand.
  • Strategy on when to time your application.
  • Realising the value of your trade mark – why your trade mark is considered an asset on your balance sheet.
  • The importance of maintaining and enforcing your registered trade mark rights once your mark is registered.

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Make an Enquiry

To make a no obligation enquiry, please either call us on 01284 619000 or make an online enquiry and we will be delighted to help you.

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