Don’t be a victim to revocation

After a trade mark has been registered, it has the potential to last for 10 years with the chance of renewal. However, at any point during this period a mark can be revoked for a number of reasons. Revocation means the mark is removed from the register and is open for anyone else to submit an application to gain protection over it.

The key reason for a mark to be revoked is through non-use. If a mark is not being used to its full effect, it would not be fair to prevent another party from using it. As registration of a trade mark creates a monopoly, this monopoly would unused, which does not make business sense. There would not be a fluid flow of ownership of trademarks which enables profit growth and competition to develop. Section 46 of the Trade Mark Act 1994 gives the requirements of what constitutes adequate use. if a mark has not been put to genuine use, which is seen as more than once but is not expressly defined, within a period of 5 years it will be revoked.

A mark can also be revoked for a number of other reasons, the key ones being:

-          A loss of distinctiveness and the development of a clear link with the goods or services it is registered for

-          A mark will be revoked if it can mislead the public as to the quality of the goods or services it represents

-          It has been registered incorrectly, meaning it conflicts with a previously registered mark that had been registered before the mark in question

An application to revoke a mark can be submitted by anyone including the trade mark owner and a third party. An application can be submitted for revocation of the whole mark or for just a select number of classes of goods or services that its registered for.

For any advice, contact Jane at The Trademarkroom.

By Ellis Sweetenham