My trade mark has been revoked- what can I do?

When you have successfully registered your trade mark, you have protection over that brand for a period of 10 years.

However, you are still subject to the removal of that protection if you fall under a number of categories outlined in the Trade Marks Act 1994.

Your trade mark can be revoked and removed from the register if it is found you have not complied with section 46 TMA 1994. If this occurs, your mark will be released and will be free to be registered by another party.

The key reason for which a trade mark would be revoked, is non-use. To prevent a person from building up an unnecessary portfolio of trade marks that they do not use properly just to ensure they have the monopoly to prevent others from using them, a trade mark must be in genuine use.

What is meant by genuine use is unclear, but case decisions have deemed it more than a single use in a jurisdiction or class of goods or services. A mark can be revoked in part, if it has not been used properly in a class it is registered for, or in a jurisdiction it has protection in, this part of the mark can be revoked and the other part that is in genuine use can continue unharmed.

This genuine use must be clearly identified in a period of 5 years, before action to revoke will be taken.

This is however, not the only reason why a mark can be revoked.

The other less common reasons include:

• If the mark has been registered incorrectly allowing it to conflict with a previously registered mark
• A loss of distinctiveness and a development of a descriptive nature in relation to the goods or services for which it is registered.
• If the mark is of a misleading nature and is not clear as to the quality of the goods or services provided

Once a trade mark has been revoked, the only step to take if you want to have protection over that mark again is submit another application to re-register it. However, only do so if you are going to use it properly.

An application for revocation can be submitted by anyone, not just the trade mark owner, therefore other parties could apply in relation to your mark or you can apply to revoke another mark owned by someone else.

For more information, visit the UK Intellectual Property Office’s website or get in contact with Jane Coyle at The Trademarkroom.

By Ellis Sweetenham