Revocation of trade marks
Any mark that is successfully registered has the ability to gain protection for an infinite number of years.
However any registered mark also can be revoked from the register for a number of reasons.
A key reason for a trade mark revocation is non-use. A registration of a mark creates a monopoly which prevents others entering into certain markets or using certain business brands. It would be unfair to allow this monopoly to go unused for a long period of time. Section 46 of the Trade Marks Act 1994 states that after a period of five years, a mark will be revoked if it has not been put to genuine use. Proper use is subjective, however it can be said that a single use of a mark would not be genuine use.
In addition, a mark can be revoked if it no longer satisfies the criteria for which it was registered in the first place. For a mark to be registered, it has to distinctive. A mark can lose its distinctiveness and become more descriptive of the goods it is registered for over time through dilution.
A mark can also be revoked if it is seen to mislead the public as to the quality and nature of the goods for which it is registered.
An application for revocation can be made by any party, including the mark owner themselves. The mark can be revoked for all classes of goods registered or just a portion of them, depending on the circumstances. It may be the case that mark hasn’t been used in one class of goods but has in another.
The Trademarkroom can help you initiate a case for trade mark revocation or can give you guidance of any danger you may find yourself in with your own marks.
By Ellis Sweetenham