The revoking of a trade mark is a real threat. Registering your trade mark protects your business’s intellectual property. It stops other companies from using a similar mark without your permission.
However, if you don’t use your registered trade mark within five years, it could be revoked.
Use your trade mark or risk losing it
Trade marks are commercial assets. Demand for certain marks can be high, so it’s unfair for one company to have a monopoly over it when it’s not using it.
According to section 46 of the Trade Marks Act 1994, if it’s not put to genuine use within five years of the date of registration, it could be revoked for non-use.
For this article, we’re looking at trade mark revocation in response to non-use. However, there are also grounds for it if:
- It has not been used for an uninterrupted five-year period (non-use)
- The trade mark has become the common name (e.g. Hoover) for a product or service for which it is registered (generic use)
- The public may be misled by it (improper use)
Anyone can apply to have a trade mark revoked by filing a form TM26(N) for non-use, or TM26(O) for any other reason.
What is ‘use’ and how can it be proved?
When we use the word ‘use,’ we mean actual commercial use, not just token use. Plus, the use must occur in the country in which the mark is registered.
As for the amount and frequency of use, that depends on what the goods or services are. For example, selling two or three cases of cat food over a five-year period would be seen as insufficient use. However, the sale of two or three ships would be sufficient.
To prove use, you have to be able to show a clear chain of documentation identifying the use of the mark concerning the goods/services for which the mark is registered.
Are there any exceptions?
There are times when there’s an excellent reason for being unable to use a mark. For example, in the pharmaceutical industry, a mark may be intended for a product that’s awaiting approval from the appropriate regulatory authority.
It’s time to review your trade mark portfolio
If, as a business, you’ve registered multiple trade marks for various products and services, it’s vital you review your portfolio.
For every trade mark, ask:
- Has it been genuinely used to at least a reasonable extent in the last few years?
- Can its use be proved satisfactorily?
- Do you have any goods/services that aren’t covered by the registration?
- Is the form of the mark registered the one now being used?
- Is the registered proprietor using the mark? If it’s being used by someone else make sure there is an appropriate licence
- Is it being used (now or in the future) in a country where it is not yet registered?
You should also consider whether there are any trade marks not yet the subject of applications or registrations, which should be. Also, do you have a trade mark watch in place, and does it have the appropriate coverage?
Trade marks are valuable assets, and therefore great care should be taken to ensure their validity to avoid revocation.
To make sure your trade marks are protected and safe from revocation: