Revocation of a Registered Trade Mark

There are two forms of revocation – revocation on the grounds of non-use and revocation on grounds other than non-use. The former will be discussed first.

Revocation on grounds of non-use

This is a legal procedure which allows anyone to seek to remove a registered trade mark because they think it has not been used. A person is able to apply for all or only some of the goods and/or services for which a trade mark is registered.

Calculation of dates for revocation

These dates must be calculated in order to determine which section of the Trade Mark Act 1994 is followed.

1. Section 46(1)(a)
2. This section is used when a trade mark has not been used in the UK by either the proprietor or someone else with the proprietor’s consent in the five years since it was registered and there are no proper reasons as to why it has not been used.
3. For example, if registration on a trade mark was completed on 18^th March 2000, the five-year period in which to commence use ends on the 18^th March 2005. Therefore, the earliest date for a revocation application is the 19^th March 2005.

• Section 46(1)(b)
• This section is used when the trade mark has not been used for an uninterrupted period of five years and there are no proper reasons for non-use.
• The difference here is that the five years of non-use do not have to start from the day of registration as Section 46(1)(a).
• As long as there is an uninterrupted period of five years of non-use, a revocation application can be filed.
• For example, if registration is complete in 1998, an application can be made in 2005, for the period of non-use from 2000 to 2005.

Serving the Application

Under Rule 38 of the Trade Mark Rules 2008, an application must be made on a TM26(N). This is sent to the registered proprietor of the trade mark.

TM8(N)

The registered proprietor had two months from when the TM26(N) was sent to them to file their defence. A defence is filed on a TM8(N) and includes a counterstatement and may also include evidence of use or evidence supporting reasons for non-use. This period cannot be extended. However, if the proprietor fails to file evidence of use or supporting evidence for non-use with the TM8(N), a period of two months will be allocated to file this evidence. If evidence is not filed within the additional time allowed, the Tribunal may treat the revocation action as undefended and therefore may revoke the registration.

Failure to file a defence (TM8(N))

This follows Rules 38(6) and 38(7) of the Trade Mark Rules 2008. In very limited cirsumstances, if the proprietor fails to file a defence but subsequently opposed the application before the registration has been revoked, the defence may be admitted late by discretion of a Hearing Officer. There are some considerations taken into account for a late defence to be admitted into proceedings. These include:

• Reasons why and the extent to which the deadline was missed
• The consequences of treating the proprietor as opposing or not opposing the application
• Any prejudice caused by the delay

Evidence

Any evidence filed within the TM8(N) forms the first evidential stage. It is then up to the discretion of the Tribunal to specify further periods for the parties to file evidence.

Revocation on grounds other than non-use

This form of revocation has two additional grounds by which a person can try and remove a registered trade mark. These are:

1. The trade mark is generic as it has become the common name in the trade for the goods or services for which it is registered.
2. The trade mark is likely to mislead the public as to the nature, quality or geographical origin of the good or services on which it has been used by the proprietor or someone else with the proprietor’s consent.

Serving the Application

Under Rule 38 of the Trade Mark Rules 2008, an application must be made on a TM26(N). This is the same as applications for revocation on grounds of non-use.

Defence

The structure of the defence is the same as that for revocation on grounds of non-use. A registered proprietor has two months from the TM26(N) to file a TM8(N). This period cannot be extended, but a further two months can be allocated if the TM8(N) does not include evidence. If evidence is not filed within the additional time allowed, the Tribunal may treat the revocation action as undefended and therefore may revoke the registration. The considerations of failing to file a defence are the same here as they are for revocation applications on grounds of non-use.

Evidence

The process for the submission of evidence is the same for these grounds as it is for grounds on non-use.

Conclusion

Revocation on grounds other than non-use can be of concern for registered proprietors as trade marks becoming ‘generic’ or ‘misleading’ are particularly vulnerable to revocation. Proprietors must ensure that their marks are policed to avoid them becoming used generically and also must ensure that their use of the mark does not cause any conflict with the grounds of revocation. A registered proprietor must also ensure that they use their registered trade mark to ensure no application is filed against them.