Why has my trade mark been revoked?

As trade marks are such valuable assets, it is possible to create control over them for a long period.

However, you could find yourself in the situation where you have your trade mark revoked where it is removed from the register. This can happen for a number of reasons.

The main reason for the revocation of a mark is non-use. It would be unfair to allow the monopoly over a mark indefinitely when it was not being used to its full effect. It prevents competition in certain industries and would have a direct effect on the amount of trade marks available for registration. The requirements for this is outlined in section 46 of the Trade Marks Act 1994 which states that after a period of five years, a mark will be revoked if it has not been put to genuine use. Proper use is subjective, however it can be said that a single use of a mark would not be genuine use. The majority of the marks that are revoked on a day to day basis are due to the non-use reason.

If a mark has lost its distinctiveness and has become synonymous with the class of goods and services for which it is registered, it will also be revoked. This is because it no longer satisfies the criteria for which it needs to comply with to be registered. If a mark becomes descriptive, it no longer has the unique characteristic that is a key element of a trade mark.

A mark that can mislead the public in relation to the quality and sources of the goods or services for which the mark is registered can also be revoked under section 46 of the 1994 act.

For a mark to be revoked an application has to be submitted. This can originate from the trade mark owner themselves or another party, most likely a competitor. In any revocation matter, the whole mark does not have to be affected. It could be that the mark is not being used for a certain number of classes of goods or services for which it is registered but is used satisfactorily in others.

If you need any advice in relation to any of your own marks, please contact The Trademarkroom to have help form the experts.

By Ellis Sweetenham