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An application for the invalidity of a registered trade mark is a legal procedure which allows a party to seek the removal of a registered trade mark and declare that registration never to have been made.
Applications for invalidity are based on Section 3 and/or 5 of the Trade Marks Act (TMA) 1994.
- Section 3
This section relates to an absolute ground for an application of invalidity. That is, in other words, something about the mark itself that causes it to be invalid. For example, trade marks that consist of signs or indications that have become customary in the established practised of the trade.
- Section 5
This section relates to relative grounds for an application of invalidity. That is where the nature of the trade mark would cause an infringement of another person’s existing marks or rights. For example, if a trade mark is similar to an earlier trade mark and the goods or services applied for are also the same. An application on this section may only be brought by the owner of the mark the application is based upon.
Application for declaration of invalidity
An application for a declaration of invalidity is made on a TM26(I) and is accompanied by a statement of grounds on which the application is made. If the application is based on an earlier trade mark, the following must be included:
- The jurisdiction in which the mark is registered
- The registration number of the mark
- The goods and services for which that mark is registered
- The goods and services on which the application is based.
It may also require a statement of use; this would state on what goods and services the mark has been used and would give valid reasons for non-use. However, this is only needed in applications where the earlier mark has been registered for more than five years at the date of the application for invalidity.
Serving the application
As per Rule 41 of the Trade Mark Rules (TMR) 2008, the TM26(I) and the statement of grounds are sent to the registered proprietor once the application has been accepted by the Tribunal. The date these are sent is called the “notification date”. The proprietor has two months from the “notification date” to file a TM8 (defence). This includes a counterstatement which has the purpose of responding to the statement of grounds by the applicant. This two months period is fixed, so if a defence is not filed, the Tribunal may treat the proprietor as not opposing the application and could therefore declare the registration of the mark as invalid.
Acquiescence (relative grounds only)
Section 48 of the TMA 1994 offers a defence for the registered proprietor. If the claim is based on Section 5 (relative grounds), the proprietor may have a defence if the owner of the earlier mark has acquiesced in the use of the mark for a continuous period of five years. In other words, if the earlier owner knew of the later registered mark being used and did nothing about it for five years, they may lose the right to challenge that registration. The defence is only available if the later trade mark was not registered under bad faith. This therefore offers a defence for the owner of the trade mark under application so long as the boxes are ticked.
Proof of use
Section 100 of the TMA 1994 puts the burden of proof of the use of a registered trade mark on its proprietor. However, as the registered proprietor has five years to put the trade mark into use, applications for marks that have been registered for fewer than five years do not require proof of use. In cases where this is required, it is the responsibility of the registered proprietor to request if proof of use is required by them.
Failure to file a defence (TM8)
This follows Rule 38(6) of the TMR 2008. In very limited cirsumstances, if the proprietor fails to file a defence but subsequently opposed the application before the registration has been declared invalid, 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
Evidence
In line with Rule 42 of the TMR 2008, the Tribunal specifies periods for the parties to file evidence. This is entirely under the discretion of the Tribunal. If there is a failure to file evidence on grounds which require evidence to support the claims, this will result in the opponent being deemed to have withdrawn the invalidation.
Conclusion
Invalidity proceedings are an important way of challenging a registered trade mark when a party believes it should not have been granted in the first place. It is crucial to comply with the Tribunal’s procedural requirements and respond within the time given. This is the case whether the application is based on absolute or relative grounds. For both the registered proprietor and applicant, taking action promptly is crucial for the protection of their respective trade mark rights.
