Brands Bulletin - January 2010

Welcome to this month's Ashfords’ Brands Bulletin.

This month we are addressing the issue of how you can revoke a third party's registered trade mark on the ground of 'non-use' and what that means in law.

Revocation and Non-Use of Registered Trade Marks

If you find that an earlier third party owned registered UK trade mark is blocking your ability to use and register your own trade mark then one option may be to apply to revoke that earlier registered trade mark on the ground of 'non-use'. 

In summary, if the trade mark has not been put to 'genuine use' in the UK for an uninterrupted period of five consecutive years and there are no proper reasons for this non-use, then the mark will be vulnerable to revocation.

But what does 'genuine use' mean? Is it enough to have sold only a very few goods under the trade mark, during the last five years?  Or does 'genuine use' mean that use of the mark has to be quantitatively significant?  A recent decision in a case brought before an Appointed Person (a person who hears appeals against decisions of Hearing Officers of the UK Intellectual Property Office) has helped to clarify the law in this area.

In this case, the Appointed Person confirmed that 'genuine use' means actual use of the mark.  It must be more than token (i.e. not just used solely to preserve the rights conferred by the registration) and must be consistent with real commercial exploitation that is aimed at maintaining or creating an outlet for the goods or services, or a share in that market.  This includes making preparations to put goods or services on the market, such as advertising campaigns, but does not include internal use by the trade mark owner. 

Further, use of the mark need not always be quantitatively significant for it to be deemed genuine.  Even minimal use may qualify as genuine use if it is the sort of use that is appropriate in the economic sector concerned for preserving or creating market share for the relevant goods or services (i.e. where the use of the mark would be understood by relevant consumers as aimed at creating market share, such that the mark would be understood by them as a 'badge of origin').  All relevant facts and circumstances must be taken into account in determining whether there is real commercial exploitation of the mark.  One single commercial transaction under the mark (e.g. just one sale made of goods sold bearing the trade mark in the last five years) may be enough to establish 'genuine use' of the mark, but whether it is will depend on whether it is the sort of use that is appropriate in the economic sector concerned for preserving or creating market share for the relevant goods or services.  For example, it is doubtful that just one single sale in five years of foodstuffs sold under a trade mark would be sufficient, whereas one single sale of a submarine sold under a trade mark might well be sufficient (i.e. if it is the sort of use that is appropriate in the economic sector concerned for preserving or creating market share for the relevant goods or services, namely the sale of submarines).

The other very important point to come out of the case is the need for trade mark owners to keep good records, evidencing their use of their trade marks.  If you have used your marks, but you cannot prove this, then you may still lose your trade marks (i.e. they may be revoked for lack of genuine use), as the burden is on you to prove your use.  So, make sure you keep copies of your invoices (evidencing sales made under your trade marks) and advertising and promotional materials (evidencing your promotion of your marks), in case you ever need to prove 'genuine use' of your trade marks.   

Should you wish to receive further editions of the Ashfords' Brands Bulletin, please email  g.williams@ashfords.co.uk        

Ashfords LLP is regulated by the Solicitors Regulation Authority. The information in this note is intended to be general information about English law only and not comprehensive. It is not to be relied on as legal advice nor as an alternative to taking professional advice relating to specific circumstances.