Trade mark “revocation” is a legal process that allows anyone to try and remove a trade mark registration from the UK register.
Revocation for Non-Use – Use it or Lose It
When you apply to register a UK trade mark, you have to declare that you have a bona fide intention to use that trade mark in relation to the goods and/or services it covers.
If, after five years from the date of registration, you have not used the trade mark in this way, it becomes vulnerable to revocation on the grounds of non-use and these proceedings can be initiated by any interested third party, even anonymously.
If in defence to the action evidence is not provided to show there has been genuine use of any or all of the designated goods and/or services, or there are no proper reasons for non-use, then the registration will face a partial or full revocation.
RUBY MURRAY
Anyone from the south will recognise that “Ruby Murray” is cockney rhyming slang for a “curry”.
In December 2018, an individual named Tariq Aziz applied to register RUBY MURRAY as a a UK trade mark in relation to a variety of foods and food and drink services in n Classes 29, 30 and 43. This application went through unchallenged and was registered on 10 May 2019.
Five years later, Dishoom Limited filed a non-use revocation action against Aziz’s registration. Dishoom considered that Aziz had never used the mark in the course of commercial trade and that the right he had established should be removed.
Whilst the trade mark registration was in place, Aziz would have a claim of trade mark infringement against any party using the term RUBY MURRRAY in relation to food and drink products.
In his defence, Aziz claimed that his mark had been in use in relation to food services provided from premises in Islington (which are currently closed for refurbishment) and for “ready meals”. In essence, he has claimed there is “genuine use” of his mark and that the revocation action should be quashed.
As these proceedings are in their infancy, we will have to wait a while to see what the Tribunal’s decision is.
Genuine Use
How is genuine use proven?
The UKIPO does not provide a tick list of evidence that should be filed to show a mark has been put to genuine use, but the evidence must serve to show that there has been a real commercial exploitation of the mark on the market for the protected goods and/or services.
Typically, evidence materials such as the following should be provided by a trade mark owner when defending a non-use revocation action:
- Turnover figures relating to the goods and/or services produced, sold or provided under the mark.
- Invoices showing the mark in relation to the goods and/or services produced, sold or provided under this.
- Images (screenshots or photographs) of products to which the mark is applied.
- Awards won for the goods and/or services produced, sold or provided under the mark.
Fundamentally, it must be shown that the use guarantees the identity of the origin of goods and/or services to the relevant consumer and that this use has been consistent and at least at a point in time within the last five years prior to the action being brought.
Proper Reasons For Non-Use
In revocation proceedings (for non-use), it is possible to defend a registration’s lack of use if it can be shown there were proper reasons for such non-use.
Reasons of this nature would need to be due to exceptional circumstances outside of the trade mark owner’s control, such as import/export restrictions, waiting on regulatory approval or natural disasters.
Evidence must be provided to support these reasons and would need to show that had these extreme circumstances not occurred, there would have been a genuine use of the mark.
Use In a Different Form to That Registered
Sometimes, a registered trade mark is challenged for non-use because the trade mark owner uses the mark in a different form to that which is registered.
For example, the registration might protect a logo but over time this logo has evolved and the trade mark owner later uses it in a different format.
In this situation, it may still be possible to provide evidence of use to qualify as genuine use of the mark as registered. The critical point here is that the use of the mark must not be in a form differing in elements which do not alter the distinctive character of the mark.
In other words, the mark in use should be in the same material form and should not be readily distinguishable from the mark under the registered format.
Use Is Commenced Or Resumed
Trade mark law provides that a trade mark shall not be revoked for non-use if use has commenced or resumed after the expiry of the five year period and before the application for revocation is made.
Essentially, commencement of use before the receipt of a revocation action is always the best remedy.
If a trade mark owner received the threat of a revocation action by another party, any use he or she makes of the mark within a three month period following notification of the threat shall be disregarded. The person or business making the threat must file an action within this period. If they do not, use of the mark following the expiry of the three month notice period could be sufficient to save the owner’s registration if an action is subsequently brought.
Other Grounds For Revocation
There are further reasons a trade mark could be revoked:
- The trade mark has become the common name in the trade for the product or service for which it is registered.
You cannot register generic terms as trade marks, but if the mark becomes generic over time (critically, in consequence of acts or inactivity of the trade mark owner) then it can be revoked by third parties.
There are many examples of marks that were once registered as trade marks but have since entered common parlance and deemed to be generic. The most classic examples are ASPRIN and ESCALATOR.
- The trade mark is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services.
If a registered trade mark is deceptive, for example it suggests that the goods come from a particular geographical location and they do not, then your trade mark is at risk of being revoked.
How Do I Prevent My Registered Trade Mark From Being Revoked?
- When you apply to register your trade mark, do not include goods and/or services in your specification that you have no realistic intention of selling/providing.
- Ensure your registered mark is being used for the goods and/or services it was registered from the crucial date (five years following its date of registration).
- Robustly defend the use of your registered trade mark – particularly under circumstances where others could be using it descriptively as a generic term.
If you have any concerns about your registered trade mark(s) being revoked, or have cause to initiate revocation proceedings against the registration of another business or individual, then talk to us today for some plain language advice and assistance.
