Removal of trade marks from the register

Community and UK trade marks once registered, need to be renewed every ten years to remain on the register.  Thus in theory a trade mark can remain on the register indefinitely, proving to be a valuable asset to any brand or business.

Removal from the register may be voluntary or at the instigation of a third party or the registrar.

If a Community or UK trade mark is not renewed on its tenth anniversary of its filing date it will be removed from the register.  If we are your agent, we will notify you six months before the expiry date that you need to renew your trade mark. If this time limit is not met you can renew the trade mark within six months of the expiry date, however there is a 25% surcharge. 

A trade mark may be surrendered voluntarily by the proprietor, in part or in whole at any time.  Once the trade mark has been surrendered it cannot be resurrected. The surrender is effective from the date the surrender is registered. It is important to take consideration of any licensees of the trade mark.  If a trade mark is surrendered with current licences in place, it will almost certainly be a breach of its obligations under the licence.

A third party may instigate the removal of a trade mark from the register.  The burden of proof remains with the party challenging the registration of the trade mark. In relation to a UK trade mark this may be done through the UK Intellectual Property Office or the High Court. The Office for Harmonisation in the Internal Market has exclusive jurisdiction to revocation and invalidity applications for Community trade marks.  

A declaration of invalidity may be sought for the entire registration or for some of the designated goods or services. The date that the trade mark was applied for is the date that validity is assessed, unless there is a claim that the trade mark has acquired a distinctive character through use. 

A claim for invalidity may result if the trade mark was registered in breach of Section 3 of the Trade Mark Act 1994, the absolute grounds for refusal, for example if the trade mark is devoid of any distinctive character.  However there may be a defence if the trade mark has acquired distinct character through use. A claim may also result if the trade mark was registered in breach of Section 5 of the Trade Mark Act 1994, the relative grounds for refusal, for example if it is identical to an earlier trade mark. A defence may arise if consent has been obtained from the proprietor of the earlier mark.

A third party may wish to have the registration revoked this may be in whole or some of the designated goods or services.  If a trade mark has not been used for the designated services for a consecutive period of five years, unless there is an appropriate reason for non-use, it may be susceptible to revocation.  A trade mark may face revocation if it becomes a common name in trade for the designated goods or services. ‘Vaseline’ was revoked on the basis that it had become a common name for petroleum jelly.  If use of a trade mark by the proprietor is likely to mislead the public, it will be susceptible to revocation. This could be on the basis that it is misleading to the quality or origin of the designated goods or services. 

By Sam O'Toole