Trade mark owners beware, use it or lose it!

While it may seem that you are free to use your mark as you wish once you have it registered, this is not the case.

It is essential that you are using your mark effectively, whether it is registered in the UK or EU, to ensure you will be fall foul of revocation proceedings.

To prevent a trade mark monopoly, a mark is not allowed to sit unused therefore preventing another party from registering it.

Therefore, anyone can submit an application to revoke the mark if it has not been used in a period of five years and there is no proper reason for its non use. This use must be ‘genuine’ which means a single or a few uses over the five year period are not enough. Substantial and continuing use is required.

This can be in relation to an area or a class. Therefore, it may be that you have an EU trade mark however; you only use it in the UK. Use only in one country may not be enough to determine proper use. Each case is decided on its own facts but many cases have struggled to show genuine use in only one member state of the EU.

In addition, your mark may be revoked in a class of goods or services. If you have registered your mark for more than one class of goods or services but you are only using it in one class, a person can submit an application to determine your mark as revoked in the unused class.

If your mark is revoked, it will be removed from the register either in full or for the part in which it has been deemed to not have been used properly.

If you have received notification that your mark is being review for revocation proceedings or you are looking to submit a revocation application against another mark, please contact Jane Coyle at The Trademarkroom.

By Ellis Sweetenham