Trade mark revocation- what does it mean?

The benefit a trade mark can give to a business can be substantial. It is therefore essential that any trade mark registered is being used to its fullest effect to ensure that marks are not being wasted.

A trade mark is initially registered for a period of 10 years with the prospect of renewal after this period.

However, the mark is not completely safe during this time. The trade mark can be removed from the register at any point if it is believed to fall under any of the categories outlined in Section 46 Trade Marks Act 1994. If the mark is removed from the register, it has been ‘revoked’ and will now be free for registration by another party.

The most common reason for the revocation of a mark is non-use. A mark can be revoked if it can be proven that it has not been used to its full effect. The reason for freeing up unused trade marks is to allow a flow of ownership preventing the development of monopolies over marks that would prevent another party from pursuing their business. The mark will have had to be put to genuine use within a 5-year period for it to be seen as being used effectively. While genuine use is not defined, it is a general consensus that this is more than a single use.

There are a number of other reasons as to why your mark could be removed from the register. These 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

To submit an application for revocation, it has to be issued through the UK Intellectual Property Office. The mark can be revoked for a number of the classes for which it is registered, it does not have to be the whole mark.

For any further advice, please contact The Trademarkroom and speak to Jane.

By Ellis Sweetenham.