Trade Mark Revocation Proceedings
If you don’t use your trade mark, you could find yourself facing revocation proceedings.
Your trade mark is a valuable commercial asset. As such, demand for certain marks can be high. So, it is judged unfair for you to have a monopoly over it when you’re not using it. And, under section 46 of the Trade Marks Act 1994, if you don’t genuinely use it within five years, or in any five-year period, it can be revoked for non-use.
Our team will work with you to make sure you get the best outcome if you find yourself facing revocation proceedings. But more than that, once your trade mark has been registered, we’ll help you keep an eye on it to make sure it’s legitimately used and protected.
How can I revoke a trade mark?
As we say, demand for good trade marks can be high, especially in certain growing industries such as vegan food, and spirits, such as gin and rum. It could be that you know a competitor’s trade mark is not used, but you’ve checked the Trade Marks Register to see that the particular mark is in fact still registered. That registration could prevent you registering the same or similar mark in that class of goods, unless you do something about it by applying to revoke the registration.
We can act on your behalf to initially investigate the use of the mark, sometimes by engaging third party investigators to conduct discreet enquiries, or by conducting Internet searches. In this way we can assess whether the mark is in fact vulnerable to cancellation, and whether a revocation action would have a good chance of success. Drafting the grounds for a revocation action can be complex. Most notably, we ensure the non-use date ranges claimed are accurate and that the grounds are drafted to get you the right result. This clears the way for your trade mark to be registered and for your product or service to hit the market with no issues.
What is ‘use’?
To satisfy the term ‘use’, a trade mark must be in commercial use in the country where it is registered, for the goods and services for which the mark is registered. Internal use of a trade mark is not sufficient, and neither is use which amounts to giving away free samples in order to promote other goods or services.
The amount and frequency of use which is sufficient to save a registration from revocation will depend on the circumstances. Our team will help you defend your registration by putting together clear evidence of use of your trade mark in relation to the goods and services for which it is registered. If we file a revocation action on your behalf against a competitor’s trade mark, we will study the use filed by the owner and advise you whether it will be considered sufficient to revoke the mark entirely, or for only part of the goods registered.
Reviewing your trade mark portfolio for vulnerabilities
If, as a business, you’ve registered multiple marks for various products and services, it’s vital you review your trade mark portfolio at least annually. In this way you can pre-empt potential attacks on your trade marks by getting one step ahead of your competitors.
For every trade mark, look at whether:
- It has been in genuine use in the last few years
- The trade mark you are using now is the same as the one you have registered
- Its use can be proved using actual examples such as invoices, advertising, reports and packaging
- You use your trade mark on any goods or services not covered by the registration
- The business using the mark is the exact same one as owns the mark on the Trade Marks Register
- If the trade mark is being used by another business, whether they have a licence in place, and this is recorded
- You have expanded use to other countries but not registered the mark there
Here at Ward Trade Marks, we offer reviews of your trade mark portfolio to ensure your valuable rights are not lost or become outdated over time.
Another way to be sure your trade marks are secure is by using a trade mark watch service. We offer our clients peace of mind through our WARDWATCH® trade mark watching service.
Trade marks are valuable assets, and therefore great care should be taken to ensure their validity and avoid revocation.
Other cases for revocation
Genericide occurs when a trade mark is used in the wrong way, so that over time it loses its distinctiveness and becomes a common name for a certain type of goods. Believe it or not, genericide can be a side effect of a trade mark’s popularity.
History is littered with examples such as HOOVER, FRISBEE, and ESCALATOR, which have all lost their distinctiveness over time. It’s best practice to use a trade mark as an adjective, such as a HOOVER vacuum cleaner. However, when a trade mark is used as a verb or noun, its distinctiveness and value are lost.
If genericide does happen, a third party could file a revocation action to cancel your trade mark registration because it has become a common name in the trade or as used by the public.
Misleading trade marks
If your use of your trade mark is misleading, or becomes misleading over time, a third party could seek to have your registration cancelled. For example, say that you own a trade mark which is registered for chocolate and milk shakes. You then sell off the part of the business for milkshakes to a new company and keep the chocolate business, yet you both continue to trade using the same trade mark. In this instance the trade mark has potentially become misleading, as it is difficult for consumers to know or to remember who owns what.
Trade Mark Reviews
One of the greatest assets of any brand is it’s IP. Working with Rachael is a joy – her professional insight, experience and clear (no jargon) communication enables you to make informed decisions about how and where you protect your brand. Whatever stage of business/brand development you are currently at, I’d recommend speaking with Rachael, to find out what you can protect and the best ways to achieve a robust solution, that’s fit for purpose.
Extremely happy with the professional service provided by Ward Trade Marks in obtaining our trade mark. Their advice and support made the process stress free and I would not hesitate to recommend them to others.
Rachael is extremely personable and professional. She has handled all of our trade marking adventures over the last few years with success and efficiency. Highly recommended.
Rachael worked with my daughter and me to trade mark our company name, Arya Candles. She is a true professional and a delight to work with. Highly knowledgeable and nothing was ever too much trouble.
Rachael Ward provided us with excellent service over a period of over 3 years (2014-2017). Rachael is a very practical and pragmatic trade mark attorney: she gets quickly to the heart of a problem and is extremely efficient in her work. She has a good depth of knowledge about trade mark law, but never allows this to get in the way of clear-sighted, practical advice. I would strongly recommend any business to use Rachael Ward and Ward Trade Mark Services on trade mark issues.
As a marketing and design company it has been in the back of my mind since I launched TukTuk Creative Marketing to trademark the brand. There have been a few local companies who have recently had to change their name and branding because another company has objected. I love our company name, and it brings to life what I wanted to do when I started the company – taking brands on an inspiring journey, and what better way than on a TukTuk. To lose the name now or in the future would be crushing. Rachel has been amazing from the start, and I whole heartily trust her to set up the Trademark and follow up with any issues that occur along the way.
Rachael is very efficient and productive trademark law expert which helped us to register copyrights for few our brands. She did a good research and gave us useful advices. Their fees are very reasonable. We were happy working with her.
I approached Rachael after working unsuccessfully with two other trade mark companies. Rachael was a joy to work with. She explained everything very clearly and was very open and upfront with her pricing. I was kept fully updated of the progress of my application. I am pleased to say I have now got my EU trademark, thanks to Rachael.
Our initial consultation with Rachael at Ward Trade Marks reinforced our focus regarding our branding and Company marketing for the future. Once BoMoJo was officially registered and published it enabled us to apply and acquire @BoMoJo as a Twitter username from an account that had been dormant for over 6 years. Twitter processed our request, swiftly and promptly and all was completed within a week, transferring our followers from @BoMoJoProd to @BoMoJo. Quite simply a first-class service is what you can expect from Rachael, who is extremely efficient, using her experience, knowledge and expertise to deliver your Trade Mark requirements. Rachael is thorough and precise. Cristina and Barry have absolutely no hesitation in highly recommending Ward Trade Marks.
Having been recommended to us by a trusted friend, we engaged Rachael to acquire a trade mark for our new venture, and thank goodness we did. What we thought would be a simple application, met with objections from a company in the US, however Rachael’s sound, professional advice, steered us through the negotiations to a successful conclusion, TM approved! I would not hesitate to recommend Rachael to anyone who is not an expert in such matters, (and the bill was very reasonable too!)
Rachael was a business partner to Mars trade marks team advising on all product segments. Rachael applies a compelling mix of trade mark and commercial knowledge and experience to her advice. She is a clear communicator and client-focus is always number 1. A true collaborator and pleasure to work with.
As a branding agency, we believe that it’s critical for businesses to make sensible decisions about protecting their entities. We recommend using Ward Trade marks to our clients, as they fully comprehend the minutiae of the whole process and get it done in a fuss free, cost effective way, but most importantly, they make sure your brand assets are fully protected, which can alleviate a lot of potential heartache later on.
As a charity The Woodbridge Tide Mill Museum was hesitant to enter the world of trade mark protection for fear of endless paperwork and high costs. We were recommended to speak to Ward Trade Marks and it proved to be good advice. Bill and Rachael provided a fast, well-explained and cost-effective service so that the whole matter was resolved within a couple of months. No stress, no jargon just common sense, knowledge and experience. Highly recommended.
Ward Trade Marks were fantastic to deal with, they explained everything in an understandable way which for the layman made it easy to comprehend and have efficiently seen our application through from initial discussion to fruition. As a charity our name means everything and we wanted to protect it.
Friendly, knowledgeable people, who I feel we can trust with all of our Trademark concerns / issues. The company is available when I need them (answer my queries out of regular hours – not something I can expect but something I really value and appreciate) and I feel ‘goes the extra mile’.
-Loved your service. I thought the service was very friendly and professional and couldn’t ask for anything more really.
Great attention to detail, good updates right through the process – we were new to the trademarking process, you supported us through the journey. So from our perspective you fully met our requirement.
The team @ Ward Trade Marks and especially Rachael have been instrumental in supporting and developing the IP @ Crude Coffee. As a new startup business I cannot recommend highly enough the help, guidance and IP strategy that Rachael and the team have created for us. I would not hesitate to recommend them to any other start-ups or established businesses looking to create, develop and protect your IP!
Make an Enquiry
To make a no obligation enquiry, please either call us on 01284 774841 or make an online enquiry and we will be delighted to help you.