Maintaining a registered trade mark

Following the registration of a trade mark, it is important for the proprietor to be able to protect the mark. Although within the UK, Community and the Madrid protocol, trade marks will be given 10 years protection, there is still a possibility that it may be subject to revocation from the trade mark register. The removal of a mark is likely to be instigated by another party who may feel that the trade mark should not have been registered. Below are the grounds of revocation that a proprietor should be aware of.

The Trade Mark has become generic

There is a risk that a trade mark can become generic, making it difficult to distinguish the goods or services of one business from another business, and constituting as part of a language, for example, the words Biro and Refrigerator have become generic words. Where this has happened the trade mark will fall short of Section 1(1) of the Trade Mark Act 1994 (hereafter TMA 1994), which states:

 1)      In this Act a “trade mark” means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.

 Furthermore, the Act has already stated under section 3(1)(d) that these types of marks are not capable of being registered. Therefore, if they are not capable then an already registered mark that has become generic and has failed to fulfill the purpose of a trade mark, will therefore be revoked under section 46 of the TMA 1994, following a revocation application.

 A mark may become generic when it is used as a noun rather than an adjective and when the proprietor has failed to acknowledge it as a registered trade mark.

 The Trade Mark has not been used

Where the mark has not been used within the five years following its registration, or any subsequent registration, then anyone can apply for revocation. This will result in the removal of the mark from the register. Where an application for revocation has been made, a proprietor can rebut this by demonstrating that the mark has been used within the class of goods or services that it has been registered for.

The Trade Mark has become misleading

This may become the case if the proprietor of the mark has used it or allowed others to use the mark in a misleading way. Where a mark has been licensed to others for use, the goods may differ in areas such as appearance and quality to that of the proprietor’s. If this is the case, the proprietor should put into place quality control provisions within the license agreement to ensure that a mark does not become misleading.

Conclusion

Although the proprietor may have fulfilled the task of registering their trade mark, they will still need to ensure that once registration is fulfilled they are aware of the means of protecting their trade mark to safeguard it from the risks of revocation. Once revoked, it may become difficult to have a mark re-registered.