A Guide to UK Trade Mark Invalidation Actions

This guide considers the principal grounds for invalidating a UK trade mark registration, the procedure before the UKIPO and the practical issues that arise for both applicants and proprietors.

An invalidation action is one of the most powerful tools available in the UK trade mark system. Where a revocation action brings a registration to an end from a particular date, a successful invalidation action removes it as though it had never been granted at all.

Why file an invalidation action against a trade mark?

An invalidation action can be used to remove an existing trade mark registration from the register. The argument is not that something has gone wrong since registration, but that the registration should never have been granted.

Invalidation actions can be brought against UK national registrations, comparable UK rights created following Brexit and international registrations designating the UK. As with revocation, the challenge may be directed at the registration as a whole or at only selected goods and services.

With an invalidation action, there is no waiting period. A registration can be attacked the day after it is entered on the register and there is no deadline by which an application must be brought. Delay is not risk free, however, and the defence of acquiescence discussed below can bar a claim that is left too long.

Invalidity or revocation: which action should you use?

Invalidation actions and revocations have different purposes.

Revocation looks at what has happened since registration, and in most cases at whether the mark has been used. Invalidity looks back to the filing date and asks whether the mark should ever have been registered at that date.

The main difference is when the cancellation takes place. Section 47(6) of the UK Trade Marks Act 1994 provides that where a registration is declared invalid, it is deemed never to have been made, although this does not affect transactions that are past and closed. A revocation, by contrast, takes effect only from a specified date.

That distinction can be very important for a business that is defending an infringement claim. If the registration is declared invalid, there was never a right capable of being infringed. If it is merely revoked, the claimant may still be able to rely on the period before the revocation took effect.

The two actions are not mutually exclusive. It is common to plead invalidity and revocation together. Where separate applications are filed, the UKIPO will often consolidate them.

Grounds for invalidity

There are two main principles for attacking a trade mark registration through invalidity.

Section 47(1) allows a registration to be declared invalid on the basis that it was registered in breach of Section 3, the absolute grounds for refusal.

Section 47(2) allows a registration to be declared invalid on the basis of an earlier trade mark or an earlier right.  In other words, under the relative grounds set out in Section 5.

In practice, some invalidation actions can rely on both these grounds.

Absolute grounds

An invalidation action based on absolute grounds focuses on the mark itself. The grounds most commonly relied upon are:

• Section 3(1)(b): the mark is devoid of any distinctive character;
• Section 3(1)(c): the mark consists exclusively of signs or indications which designate the kind, quality, quantity, intended purpose, value, geographical origin or other characteristics of the goods or services;
• Section 3(1)(d): the mark consists exclusively of signs or indications which have become customary in the current language or in the established practices of the trade;
• Section 3(2): the sign consists exclusively of a shape, or another characteristic, which results from the nature of the goods, is necessary to obtain a technical result or gives substantial value to the goods;
• Section 3(3): the mark is contrary to public policy or to accepted principles of morality, or is of such a nature as to deceive the public;
• Section 3(6): the application was made in bad faith.

Since the question fundamentally concerns whether the registration should have ever been granted, the assessment is made as at the filing date of the challenged mark and not as at the date upon which the invalidation action was filed. Evidence of current trade usage may still be relevant, but only insofar as it helps establish how the term would have been understood at the filing date.

Acquired distinctiveness

There is, however, an important exception. Where a mark was registered in breach of Section 3(1)(b), (c) or (d), it will not be declared invalid if, in consequence of the use which has been made of it, it has acquired a distinctive character after registration.

This is a valuable defence for owners of marks that were weakly distinctive when filed but which have since become well known. The exception does not, however, extend to the remaining absolute grounds. A mark registered in breach of Section 3(6) (bad faith), for instance, cannot be rescued by later use, however successful the brand may have become.

Bad faith

Bad faith has become an increasingly important ground of invalidity.

The Supreme Court’s decision in Sky v SkyKick confirmed that applying to register a trade mark for goods or services which the applicant never had any intention of using can amount to bad faith, particularly where the breadth of the specification suggests the application was being used to obtain protection for goods and services beyond the applicant’s genuine commercial interests.

A finding of bad faith does not always mean the loss of the whole registration. More commonly the specification is cut back to the goods and services for which a genuine intention to use existed.

Very broad specifications may therefore be vulnerable to attack. When considering a bad faith challenge, the breadth of the specification should be assessed against the nature and scale of the proprietor’s business.

Relative grounds

An invalidation action based on relative grounds focuses on the applicant’s  earlier rights and mirrors the grounds available in opposition proceedings:

• Section 5(1): the later mark is identical to an earlier mark and is registered for identical goods or services;
• Section 5(2): the later mark is identical or similar to an earlier mark and is registered for identical or similar goods or services, such that there exists a likelihood of confusion;
• Section 5(3): the later mark is identical or similar to an earlier mark which has a reputation in the UK, and use of the later mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of that earlier mark;
• Section 5(4): use of the later mark is liable to be prevented by the law of passing off, or by another earlier right such as copyright or a registered design.

An invalidation action based on relative grounds will fail if the proprietor of the earlier mark or earlier right consented to the registration. Before filing, the applicant should check whether any historic consent or coexistence agreement exists which could defeat the invalidation action.

Who can file an invalidation action?

If the invalidation action is based on absolute grounds, any person may apply. There is no requirement to own a trade mark, to trade in the same field or to explain your interest in the outcome.

If the invalidation action is based on relative grounds, the position is more restricted. An application under Section 47(2)(a) may only be made by the proprietor or a licensee of the earlier trade mark and an application under Section 47(2)(b) may only be made by the proprietor of the earlier right.

It is easy to overlook the fact that a licensee may also be able to bring an invalidation action. This can be useful where the registered proprietor is a dormant holding company or is simply reluctant to become involved in proceedings.

Proof of use of the earlier mark

Where an invalidation action is based on an earlier registered trade mark, proof of use may become a central issue.

Where the earlier mark had been registered for more than five years at the date the invalidity application is filed, the proprietor of the challenged mark is entitled to put the applicant to proof of genuine use.

There are potentially two separate five-year periods to consider:

• the five years ending on the date the invalidity application is filed; and
• where the earlier mark has been registered for more than five years at the filing date (or priority date) of the challenged mark, the five years ending on that earlier date.

An applicant relying on an earlier mark that has been registered for more than five years must include a statement of use on Form TM26(I). If the proprietor does not accept the statement of use, the applicant must provide evidence showing that the earlier mark has been used in the UK. If the applicant does not provide the necessary evidence, the invalidity application will be treated as withdrawn insofar as it relies on that mark.

Evidence of use should therefore be reviewed before filing an invalidation action, rather than after receipt of the counterstatement.

Acquiescence

Section 48 deals with the defence of acquiescence.

Where the proprietor of an earlier trade mark or earlier right has acquiesced for a continuous period of five years in the use of a later registered trade mark in the UK, being aware of that use, they lose the entitlement to apply for a declaration that the later registration is invalid. They also lose the right to oppose the use of the later mark for the goods or services in relation to which it has been used.

The defence does not apply where the later mark was applied for in bad faith. In addition, the five-year period runs from the point at which the earlier proprietor became aware of the use, not from the registration date of the later mark, so evidence of when the proprietor first became aware of the use can be important.

Brand owners should therefore act promptly once they become aware of the use of a potentially conflicting registered mark.

Bringing an invalidation action

An application for a declaration of invalidity is filed on Form TM26(I). Following the UKIPO fee increase on 1 April 2026, the official filing fee is £250.

The application must be accompanied by a statement of grounds setting out the registration being challenged, the grounds relied upon and, where relevant, full details of the earlier marks or rights being relied upon. Where an earlier registered mark has been registered for more than five years, the form must also include a statement of use.

The grounds should be considered carefully before filing. Adding further grounds later is possible, but acceptance is at the discretion of the UKIPO and is not given as a matter of course.

As with revocation, the proprietor should normally be approached before filing and given a reasonable opportunity to surrender or limit the registration voluntarily. Where an action is undefended, the UKIPO may reduce or refuse a costs award in favour of the successful applicant if no such approach was made beforehand.

Defending an invalidation action

Once the UKIPO has checked the application meets the formal requirements, a copy is served on the proprietor at their recorded address for service. The proprietor then has two months in which to file a defence on Form TM8, which includes a counterstatement. If the proprietor does not file a defence and counterstatement by the deadline, the UKIPO may decide that the proprietor does not oppose the invalidation action and the registration will usually be declared invalid by default.

The evidence does not form part of the defence at this stage. The UKIPO will set a timetable for evidence once the counterstatement has been filed.

As with revocation actions, there is no cooling-off period in invalidity proceedings. If the parties wish to explore settlement, they will need to request a suspension and be able to show that discussions are ongoing.

As well as defending the invalidation action, the counterstatement is the proprietor’s opportunity to put the applicant to proof of use, if applicable. In our experience this is the single most effective step available to a proprietor facing a relative grounds attack.

Evidence

The burden of proof differs according to the ground relied upon.

On absolute grounds, the burden rests with the applicant to show that the mark should not have been registered. A registration is presumed to be valid, so the party challenging it must show why it should not have been registered. Evidence typically includes dictionary definitions, examples of the same term being used descriptively by others in the trade and, in bad faith cases, material about the proprietor’s business and its intentions at the filing date.

Where the proprietor wishes to rely on acquired distinctiveness, the burden of establishing it rests with them, and substantial evidence will usually be required.

On relative grounds, the applicant must prove the earlier rights relied upon. Registered rights are straightforward to establish, but claims based on passing off or on reputation require evidence of use, turnover, market share, advertising and public recognition.

Evidence is normally filed by way of a witness statement. A focused and well-organised body of evidence which addresses the legal test will carry more weight than a large volume of material which does not.

Hearing, decision and costs

Following the completion of the evidence rounds, the parties may request a hearing (now usually held online), or file written submissions instead.

A hearing officer will then review the file and issue a written decision with reasons. Decisions take at least six months to issue following the hearing or final submissions, although the timescale can vary quite widely.

The registration may be declared invalid in full, declared invalid in part, or maintained.

Costs are normally awarded to the successful party in accordance with the UKIPO’s published scale. Costs are contributory rather than compensatory and a cost award will rarely come close to to the actual figure a party has spent. Off-scale costs are available where a party has behaved unreasonably, but these are only awarded under exceptional circumstances.

Appeals

Either party has 28 days from the date of the decision to appeal.

A party wishing to appeal has two options. Appeals to the Appointed Person are typically more cost-effective and are heard by a specialist trade mark judge, but the decision is final. Appeals to the High Court are more expensive and procedurally demanding, although a higher appeal would be available.

The effect of a declaration of invalidity

Where an invalidity application succeeds, the registration is treated as though it had never been made, either in full or, under Section 47(5), only in relation to the goods and services affected by the invalidation action.

The one qualification is that the declaration does not affect transactions that are past and closed. Royalties already paid under a licence of a mark subsequently declared invalid, for example, will not usually be recoverable.

Once a registration has been declared invalid it can no longer support an infringement claim, an opposition or an invalidation action of the proprietor’s own.

Invalidation as a tactical tool

Invalidity proceedings can be particularly useful where an earlier registration poses an obstacle to a proposed brand launch or trade mark application. Although the UKIPO no longer refuses applications on relative grounds, an earlier registration may still present a significant opposition or infringement risk. Removing it eliminates the obstacle altogether.

Invalidity is especially valuable where revocation is not available. For example, a registration that is less than five years old cannot be attacked for non-use, while a registration that is being genuinely used will survive a non-use attack. In both situations, an absolute grounds or bad faith challenge may be the only realistic route.

An invalidation action may also be filed as a defensive measure. Where a trade mark application is opposed, or a registration is challenged, the proprietor should also consider whether the earlier right relied upon is itself vulnerable to invalidation. Proceedings are frequently stayed pending the outcome and, if the earlier registration falls away, the challenge based upon it will either fail entirely or be significantly weakened.

An invalidation action can also provide useful leverage in settlement negotiations. A credible challenge to the validity of a registration, particularly one with a very broad specification, can encourage a proprietor to agree a coexistence arrangement, accept a limitation of its specification or grant consent that might not otherwise have been available.

Where proceedings concerning a trade mark are already pending before the court, Section 47(3) requires the application for a declaration of invalidity to be made to the court rather than to the UKIPO.

Practical tips

If you are filing an invalidation action:

• Decide early whether you are attacking the mark itself (an absolute grounds-based attack) or relying on your own earlier rights (a relative grounds-based attack). The two require quite different evidence.
• If you are relying upon an earlier registration that is more than five years old then review your evidence of use before you file rather than after the counterstatement arrives.
• Check your records for any historical consent or coexistence agreement between the parties that could defeat the claim.
• Consider whether a revocation action would be quicker or cheaper, and whether both actions should be run together.
• Consider directing the attack only at the goods and services that present the obstacle. A partial declaration of invalidity can often be all that is required.

If your registration is under attack:

• Diarise the two-month deadline for filing Form TM8 immediately and treat it as fixed. An undefended action will usually be successful by default.
• If the invalidation action relies on an earlier mark that has been registered for more than five years, put the applicant to proof of use in your counterstatement.
• Consider whether acquiescence could apply and gather evidence to show when the applicant first became aware of your mark in use.
• If the attack is based on absolute grounds, assess at an early stage whether you are able to evidence acquired distinctiveness.
• Review the specification realistically. A voluntary limitation may narrow the dispute and reduce your exposure to costs.

Stevens Hewlett & Perkins regularly represents both applicants seeking to remove trade mark registrations and proprietors defending them. If you are facing an invalidation action, or have identified a registration that is preventing a proposed filing, launch or enforcement strategy, please contact our trade mark team for an initial assessment.