A Guide to UK Trade Mark Revocation Actions

UK Trade Mark Revocation Proceedings: Key Strategic Considerations

This guide explains how revocation proceedings work before the UKIPO. It looks at the grounds on which a registration may be challenged, the steps involved in the process and the options available to each side as a case progresses. It will be useful both to businesses defending a registration and to those considering an attack against an existing trade mark

Revocation actions are a common feature of the UK trade mark system and can have serious consequences for brand owners. A successful claim may result in some or all of a registration being removed from the register.

Now picture the scenario: you have secured a UK trade mark registration and your brand is growing. Then an unexpected letter arrives from the UK Intellectual Property Office (UKIPO). Another party is seeking to revoke your registration for non-use.

Why file a revocation action against a trade mark?

A revocation action is one of the procedures available at the UKIPO for removing an existing trade mark registration from the register. In most cases, the challenge is based on non-use, although revocation may also arise where the way a trade mark has been used has altered its distinctive character in the marketplace.

Revocation actions can be brought against UK national registrations, comparable UK rights created following Brexit and international registrations designating the UK under the Madrid Protocol. The challenge may be directed at the registration as a whole or only selected goods and services. There is no requirement for the applicant to own an earlier right or explain why the application has been filed. Any person may seek revocation.

Unlike an invalidity action, revocation does not treat a registration as though it never existed. Instead, the registration is removed with effect from a specified date. In many cases that will be the date on which the revocation application was filed, although the UKIPO may select an earlier date if satisfied the grounds for revocation already existed at that time.

The distinction can be important. A defendant facing a claim for trade mark infringement may be in a much stronger position if the registration is revoked with effect from a date before the alleged infringement took place. By contrast, an invalidity action operates retrospectively. If successful, the registration is treated as though it had never been registered at all.

Grounds for revocation

Section 46(1) of the UK Trade Marks Act 1994 provides four grounds for revocation:

• Section 46(1)(a): the mark has not been put to genuine use in the UK, by the proprietor or with their consent, within the five years following completion of the registration procedure, and there are no proper reasons for non-use;
• Section 46(1)(b): use of the mark has been suspended for an uninterrupted period of five years, and there are no proper reasons for non-use;
• Section 46(1)(c): the mark has, in consequence of acts or inactivity of the proprietor, become the common name in the trade for a product or service for which it is registered;
• Section 46(1)(d): use of the mark by the proprietor, or with their consent, is liable to mislead the public, particularly as to the nature, quality, or geographical origin of the goods or services.

By far the most common grounds for revocation are those set out in Section 46(1)(a) and Section 46(1)(b). The remaining grounds under Section 46 are encountered relatively rarely in practice.

Revocation applications based on Section 46(1)(a) or (b) are filed using Form TM26(N). Applications relying on Section 46(1)(c) or (d) are filed using Form TM26(O) and are subject to a different procedural framework.

The 5-year non-use periods

Section 46(1)(a) covers non-use during the first five years after registration.

Section 46(1)(b) covers any subsequent uninterrupted five-year period of non-use.

An applicant for revocation is entitled to plead more than one non-use period, and in most cases, it is sensible to do so., because pleading only the earliest non-use period could give the trade mark proprietor an easy way out if they can demonstrate they have already started using the mark from a later date.

Form TM26(N) requires the applicant to state the start and end dates of each five-year period relied upon and the date from which revocation is sought. The earliest date that can be requested is the day following the end of the period of non-use.

It is vital to ensure the dates of non-use are correctly identified. If an incorrect date is provided, this could hand the proprietor a complete defence on evidence that would otherwise have failed.

These are not mistakes made only by inexperienced practitioners. In our experience, even seasoned trade mark professionals can fall into the same traps.

What counts as genuine use?

‘Genuine use’ is a legal test, not a commercial one, and has been the subject of a long line of UK and European case law.

To be considered ‘genuine’ trade markuse, the use must be:

• Actual use by the proprietor or by a third party with authority, rather than merely internal or preparatory use;
• More than token, in the sense of use serving solely to preserve the registration;
• Use in accordance with the essential function of a trade mark, which is to guarantee the origin of the goods or services;
• Use in relation to goods or services already marketed, or about to be marketed with preparations under way;
• Use on the market for the goods or services covered, rather than use of a purely internal or promotional character.

How much use?

There is no minimum threshold of use, which can often make it difficult to gauge whether a mark has been used sufficiently.

Small scale use can be genuine if it is warranted in the relevant economic sector to maintain or create market share.

For example, where a mark covers clothing goods, a significant number of products would need to have been sold in order to qualify as genuine commercial use. By contrast, is a mark is applied to luxury yachts, perhaps only one item bearing the mark would need to be sold.

Equally, a registration is not saved simply because the business behind it is large and busy. What matters is use of the mark, for the goods or services for which it is registered, in the UK, and during the relevant five-year period.

Can part of a registration be revoked?

The simple answer is ‘yes’.

Section 46(5) provides that where the grounds for revocation are only established for some of the goods or services, the registration will only be revoked for those goods or services.

If a trade mark owner can prove use of some, but not all, of the goods and services covered by their registration, the UKIPO will arrive at a ‘fair specification’. The question the UKIPO asks is how the average consumer would fairly describe the goods or services that the mark has actually been used on. In practice, if a trade mark owner proves use of a single product falling within a broad term, they will usually be left with a subcategory of that term, rather than the whole term or only the term specifying the one product they have sold.

In some situations it may only be necessary to remove part of a registration if it is that part providing the obstacle to your own interests. If the goods and services you are interested in fall outside the areas in which the trade mark owner actually trades, there is not always the need to attack the entire registration.

Variation of a registered mark

If you have changed the look of your brand since you first filed your trade mark and the mark you are using is no longer identical to the mark you filed five years ago, Section 46(2) states that use ‘in a form differing in elements which do not alter the distinctive character of the mark as registered‘  may still count as use.

This is a useful provision for trade mark owners whose branding has evolved over time, although it will not rescue a mark that has changed beyond recognition. Each case rests on its own merits and facts.

Exporting goods

Section 46(2) provides that affixing your trade mark to goods, or to their packaging, in the United Kingdom solely for export purposes counts as use of the mark in the UK.

Note that it is the application of the mark in the UK that matters, so goods marked abroad and simply shipped onward will not qualify.

Licensed use of a trade mark

Use by licensees, distributors and group companies can count as genuine use, but the evidence must actually establish that the use was with the trade mark proprietor’s consent.

Evidence showing a third party using the mark, with no explanation of the relationship between the parties, can do more harm than good.

Proper reasons for non-use

If there is a specific reason why you have not used your mark during a five-year period then you may be able to rely on the defence of ‘proper reasons for non-use’.

The ‘proper reason’ must arise independently of the will of the proprietor, have a sufficiently direct relationship with the mark and demonstrate that use of the mark had been impossible or unreasonable.

A classic example of an acceptable non-use defence is regulatory delays affecting the launch of pharmaceutical goods.

Commercial difficulty, lack of funds, internal reorganisation or simply ‘not getting round to it’ are not credible reasons for not using a trade mark.

In practice, arguments based on proper reasons for non-use rarely succeed and should not be viewed as an alternative to filing evidence of genuine use.

Genuine use of ‘comparable marks’ created after Brexit

If the registration in question is a comparable UK right (created automatically from an EU trade mark at the end of the Brexit transition period) then use of the mark within the EU will no longer save the registration from a revocation attack.

From 1st January 2026, only genuine use in the United Kingdom will count towards maintaining those rights. Use elsewhere in the EU no longer qualifies.

Bringing a revocation action

A non-use revocation action is initiated using Form TM26(N), while revocation actions based on other grounds are filed using Form TM26(O). Following the UKIPO fee increase on 1 April 2026, the official filing fee for either form is £250.

The application must be accompanied by a statement of grounds setting out the registration being challenged, the relevant non-use period (where applicable) and the date from which revocation is sought.

Before commencing proceedings, it is generally sensible to approach the proprietor and give them a reasonable opportunity to surrender or limit the registration voluntarily. This is not merely a matter of courtesy. Where a revocation action is undefended, the UKIPO may refuse to award or reduce costs in favour of the successful applicant if no such approach was made beforehand.

A pre-action approach can also produce a commercial resolution without the need for proceedings. In some cases, the proprietor will agree to surrender the registration or restrict the specification voluntarily, saving both parties time and expense while preserving the applicant’s position on costs should formal action later prove necessary.

Notification to the trade mark owner and resumption of use

Section 46(3) provides an important safeguard for trade mark owners. A registration will not be revoked for non-use if genuine use of the mark begins, or resumes, after the end of the relevant five-year period but before the revocation application is filed.

There is, however, an important qualification. Any use made during the three months immediately preceding the filing of the revocation action will be disregarded if preparations for that use began only after the proprietor became aware that a revocation application was likely.

This creates a tactical consideration for anyone contemplating a revocation action. Contacting the proprietor in advance is often sensible as it may improve your position on costs and occasionally prompts a voluntary surrender or limitation of the registration. At the same time, such correspondence alerts the proprietor to the possibility of a non-use attack and may encourage them to commence use of the mark.

For this reason, it is important to keep a clear record of when any warning letter was sent and to file the revocation action promptly thereafter. Ideally, the application should be filed within three months of the warning letter. Doing so helps ensure that any use commenced in response to the warning falls within the period that may be disregarded under Section 46(3). If the proprietor subsequently claims to have resumed use, evidence of when they were first put on notice of the intended revocation action can prove highly significant.

Defending a registration action

Once the UKIPO has completed its initial review and confirmed the application is formally in order, a copy is served on the proprietor at their recorded address for service. The proprietor is then given two months in which to defend the claim.

A defence must be filed on Form TM8(N). This deadline should be treated seriously.

Although evidence of use, or evidence of proper reasons for non-use, does not need to accompany the form, filing a defence without a plan for the evidence is rarely wise.

Rule 38(4) of the Trade Marks Rules 2008 allows the registrar to grant a further period of at least two months for the evidence to be filed, but that time passes quickly. Gathering satisfactory evidence often takes considerably longer than proprietors anticipate, particularly where use has not been documented carefully over the years.

As a result, it is generally preferable to begin collecting and reviewing the evidence as soon as a revocation action is received, rather than waiting until the additional period has been granted.

One further point is worth noting. Unlike opposition proceedings, revocation actions do not benefit from a cooling-off period. The parties therefore move directly into the proceedings timetable unless the case is otherwise resolved.

Missing the deadline for filing Form TM8(N) will usually result in the registration being revoked by default.

Revocation actions based on grounds other than non-use follow a more conventional procedure. The proprietor files a defence on Form TM8 and the UKIPO then sets a timetable for the filing of evidence. In those cases, the burden rests on the applicant to establish the grounds relied upon, such as that the trade mark has become generic in the trade or that its use is liable to mislead the public.

Proving use

In a non-use revocation action, the burden of proof falls on the trade mark owner. It is for the proprietor to demonstrate that the mark has been put to genuine use in the UK during the relevant period, or that there were proper reasons for any non-use.

Evidence is normally provided by way of a witness statement and should address the key elements of the legal test. The UKIPO will want to see evidence of use of the trade mark itself, in relation to the relevant goods and services, within the relevant period and on a scale sufficient to constitute genuine commercial use.

The strongest evidence is usually generated in the ordinary course of business. Examples include invoices showing sales to UK customers, turnover figures linked to the goods or services sold under the mark, catalogues, packaging, labelling and marketing materials. Advertising records, website evidence demonstrating UK targeting and contemporaneous press coverage can also be valuable.

In practice, many proprietors run into difficulty because the evidence does not address the legal test. Common problems include undated screenshots, evidence showing use of a company name rather than the trade mark in issue, worldwide sales figures with no UK breakdown and material falling outside the relevant period.

Quality is generally more important than quantity. A small body of well-organised evidence that clearly demonstrates genuine use will often carry more weight than hundreds of pages of material that fail to address the key issues.

Hearing, decision and costs

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

A hearing officer will then review the file and issue a written decision with reasons. Decisions are currently taking a number of months to issue following the hearing or final submissions, although the UKIPO has stated its intention to reduce that timescale.

The registration may be revoked in full, revoked 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 what a party has actually spent. Off-scale costs are available where a party has behaved unreasonably, but these are only awarded in 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 further appeal may be available.

Revocation as a tactical tool

Revocation actions can be a powerful strategic tool in a range of situations. One common example is where an earlier registration stands in the way of a proposed brand launch or trade mark filing. Although the UKIPO no longer examines applications on relative grounds, an earlier registration may still present a significant opposition or infringement risk. Removing that registration can eliminate the obstacle altogether.

Revocation can also be an effective defensive measure. Where a trade mark application is opposed, or a registration is challenged by way of invalidity proceedings, it is often worth considering whether the earlier right relied upon is vulnerable to revocation. Proceedings are frequently stayed pending the outcome of the revocation action and, if the earlier registration is removed, the challenge based upon it will either fail entirely or become significantly weakened.

In other cases, the value of a revocation action lies less in the final outcome and more in the commercial leverage it creates. A credible challenge against a registration that has not been genuinely used can encourage the proprietor to agree a coexistence arrangement, accept a limitation of its specification or consent to use that might not otherwise have been available.

Practical tips

If you are filing a revocation action:

• Check the registration date carefully and confirm the relevant five-year grace period has expired.
• Where the facts permit, plead multiple non-use periods and seek revocation from the earliest available date.
• Send a brief letter before action and retain a clear record of when it was sent.
• Keep the desired outcome in mind. There is often little value in seeking to remove a registration in its entirety if a partial revocation would remove the obstacle to your commercial objectives.

If your registration is under attack:

• Diarise the deadline immediately and treat it as immovable. More registrations are lost through missed deadlines than through contested decisions.
• Begin gathering evidence as soon as the action is received. Obtaining suitable evidence almost always takes longer than expected.
• Review the specification realistically and consider limiting or surrendering goods and services that cannot be supported by evidence of use.
• Do not ignore correspondence from the UKIPO. An undefended revocation action will usually succeed by default.

Stevens Hewlett & Perkins regularly represents both applicants seeking to remove trade mark registrations and proprietors defending them. If you are facing a revocation 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.