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.
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.
Simply enter your details below to receive this guide instantly:
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.
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.