Trade mark invalidation- an overview

A quick guide on trade mark invalidation, which is a process in which a trade mark can be removed from the register as if it did not exist.

When a trade mark has been registered, it not does not have guaranteed registration for the ten years that it would be protected for. There are a number of actions that can be taken against a mark if it is found it should not have been registered in the first place.

The key action is invalidation.

A mark can be invalidated if it is proven that the mark does not comply with the absolute or relative grounds outlined in the Trade Marks Act 1994.

If a mark does not comply with these, it should have not been registered in the first place therefore if an invalidation claim is brought and successfully pursued, the mark will be removed from the register as if it was never registered.

Absolute grounds are in relation to the mark itself. A mark should be refused registration if it is found to be descriptiveness of the goods it represents, contains words or phrases linked to an industry or uses words or phrases that are not unique and should be free for everyone to use.

Relative grounds are in relation to marks already registered. If a mark is found to be similar or identical to a mark that has already been registered and has protection it should not have been registered in the outset as it infringes an already established mark with protection.

An application can be made by anyone who feels a mark should not have been registered.

If you are subject to invalidation proceedings, it is up to you to prove that you have complied with these requirements and your mark is rightfully registered.

For any more guidance on this or if you have received an indication that you may have some proceeding brought against you, please contact Jane at The Trademarkroom.

By Ellis Sweetenham