Syllabus 14 Revocation and invalidation

Question 1

What is a primary ground for UK trade mark revocation under Section 46?

Answer 1

No genuine use in the UK for a continuous period of five years.

Question 2

Can use of a trade mark solely for export from the UK count as “use in the United Kingdom” for revocation purposes?

Answer 2

Yes, if the trade mark is affixed to goods or packaging in the UK solely for export.

Question 3

What other grounds for UK revocation are listed besides non-use?

Answer 3

Becoming generic or being likely to mislead the public due to proprietor’s actions/inactivity.

Question 4

Who can file an application for UK trade mark revocation?

Answer 4

Anyone.

Question 5

What is the effect of a successful UK trade mark revocation action?

Answer 5

The proprietor’s rights are deemed to have ceased from the date of the revocation application (or an earlier date ruled).

Question 6

What are the two main categories of grounds for UK trade mark invalidity under Section 47?

Answer 6

Section 3 (absolute grounds - not registrable) and Section 5 (relative grounds - conflict with earlier rights).

Question 7

Who can file an application for UK trade mark invalidity based on Section 5 (relative grounds)?

Answer 7

Only the owner of an earlier trade mark or earlier right (or licensee).

Question 8

What happens to the proprietor’s rights if a UK trade mark registration is declared invalid?

Answer 8

The rights are deemed to have never existed.

Question 9

Can a UK trade mark be invalidated based on an earlier registered mark that has not been used?

Answer 9

Yes, but the proprietor of the contested mark can request proof of use of the earlier mark

Question 10

Can an invalidity action for a UK trade mark be heard by a court instead of the UKIPO?

Answer 10

Yes, it can be brought before the High Court, or the Registrar can refer a case to the court, or if court proceedings are already pending.

Question 11

What is the UKIPO’s aim for completing revocation actions?

Answer 11

Within twelve months of the proprietor filing its defence.

Question 12

What is a ground for UK trade mark revocation under Section 46 related to non-use after registration?

Answer 12

No genuine use in the UK within five years following the date of completion of registration procedure, with no proper reasons for non-use.

Question 13

What is a ground for UK trade mark revocation under Section 46 related to a continuous period of non-use?

Answer 13

No genuine use in the UK for a continuous period of five years, with no proper reasons for non-use.

Question 14

What other grounds for UK revocation are listed in Section 46 besides non-use?

Answer 14

Becoming generic or being likely to mislead the public due to proprietor’s acts or inactivity.

Question 15

Who can file an application for UK trade mark revocation?

Answer 15

Anyone.

Question 16

Can use of a trade mark solely for export from the UK count as “use in the United Kingdom” for revocation purposes?

Answer 16

Yes, if the trade mark is affixed to goods or packaging in the United Kingdom solely for export purposes.

Question 17

How does use of a trade mark in a slightly different form affect genuine use for UK revocation?

Answer 17

Use includes a form differing in elements that do not alter the distinctive character of the mark as registered.

Question 18

What happens to use within the three months before a UK revocation application for non-use?

Answer 18

It is disregarded unless preparations for use began before the proprietor became aware the application might be made.

Question 19

What is the initial timeframe for the proprietor to file a Notice of Defence (TM8(N)/TM8) in a UK revocation proceeding?

Answer 19

Two months from the date the application is sent to them.

Question 20

What happens if the proprietor fails to file the required Notice of Defence (TM8(N)/TM8) in a UK revocation application?

Answer 20

The UKIPO may treat the proprietor as not contesting the application, and the registration may be revoked unless the UKIPO directs otherwise.

Question 21

What is the effect of a successful UK trade mark revocation action?

Answer 21

The proprietor’s rights are deemed to have ceased from the date of the revocation application (or an earlier date ruled).

Question 22

Can a UK trade mark registration be partially revoked?

Answer 22

Yes, where grounds exist for only some of the goods or services.

Question 23

What is the UKIPO’s target completion time for UK revocation actions?

Answer 23

Within twelve months of the proprietor filing its defence.

Question 24

What are the two main categories of grounds for UK trade mark invalidity under Section 47?

Answer 24

Not registrable under Section 3 (absolute grounds) and conflict with earlier rights under Section 5 (relative grounds).

Question 25

What type of earlier rights can be used as grounds for UK trade mark invalidity under Section 5?

Answer 25

Earlier trade marks, reputation, passing off rights, copyright, design right, or if the mark was filed by an agent.

Question 26

Who can file an application for UK trade mark invalidity based on Section 3 (absolute grounds)?

Answer 26

Anyone.

Question 27

Who can file an application for UK trade mark invalidity based on Section 5 (relative grounds)?

Answer 27

Only the owner of an earlier trade mark or earlier right, or their licensee.

Question 28

Can a UK trade mark registration be invalidated based on Section 3 grounds if it acquired distinctiveness after registration?

Answer 28

No, if it has acquired distinctive character subsequent to registration it may be saved from invalidation under certain absolute grounds.

Question 29

Can a UK trade mark registration be invalidated on relative grounds (Section 5) if the owner of the earlier right previously consented to registration?

Answer 29

No, the registration shall not be declared invalid if the owner of the earlier right has previously given consent.

Question 30

When can the proprietor of a contested UK trade mark registration require proof of use of an earlier registered mark in invalidity proceedings?

Answer 30

If the earlier registration is more than five years old and has not been used

Question 31

What time periods for use might the earlier right owner need to prove use for in UK invalidity proceedings if requested?

Answer 31

The five-year period running up to the filing of the invalidation action, AND/OR the five-year period prior to the filing (or priority) date of the contested mark.

Question 32

What is the effect of a successful UK trade mark invalidity action?

Answer 32

The proprietor's rights are deemed to have never existed.

Question 33

Can a UK trade mark registration be partially invalidated?

Answer 33

Yes, it is possible to invalidate part of a registration (goods/services).

Question 34

Can a UK trade mark invalidity action be heard by a court instead of the UKIPO?

Answer 34

Yes, it can be brought before the High Court, or the Registrar can refer a case to the court, or if court proceedings are already pending concerning the mark, the application must be made to the court.

Question 35

What is the generic term used by the EUIPO covering both revocation and invalidation procedures?

Answer 35

"Cancellation proceedings".

Question 36

What are the two main categories of grounds for EU trade mark invalidity under the EUTMR?

Answer 36

Absolute grounds (Article 7) and relative grounds (Article 8).

Question 37

What are some examples of absolute grounds for EU trade mark invalidity under Article 7 EUTMR?

Answer 37

Where the mark did not meet the requirements for registration, or where the mark was applied for in bad faith.

Question 38

What are some examples of relative grounds for EU trade mark invalidity under Article 8 EUTMR?

Answer 38

Existence of an earlier trade mark or other earlier right conferring a right to prohibit use

Question 39

Who can file an application for EU trade mark invalidity based on relative grounds?

Answer 39

The owner of an earlier trade mark as defined in Article 8 or the owner of another earlier right (Article 8(4)). Licensees may also be allowed to oppose (a procedure also based on Article 8) if authorised by the owner.

Question 40

Is there a cooling off period in EU cancellation (revocation/invalidity) proceedings?

Answer 40

No cooling off period in cancellation proceedings.

Question 41

What is the initial timeframe for the owner of the contested EUTM to respond to an EU cancellation application?

Answer 41

Two months (extendable) to file a response.

Question 42

In which languages must an EU cancellation application be filed?

Answer 42

One of the five languages of the EUIPO which must also be one of the two languages chosen by the EUTM applicant being challenged.

Question 43

When can the applicant for EU invalidity request proof of use of an earlier registered mark?

Answer 43

If the earlier registration was granted more than five years before the filing date (or priority date) of the EUTM being challenged.

Question 44

What is the effect of a successful EU trade mark invalidity action?

Answer 44

The registration is nullified as if it had never existed.

Question 45

Can an EU trade mark registration be partially invalidated?

Answer 45

Yes, it is possible to invalidate part of a registration (goods/services).

Question 46

Can an EU invalidity action be filed as a counterclaim in infringement proceedings?

Answer 46

Yes, application for invalidation can be filed at EUIPO or as a counterclaim in infringement proceedings in a National or EU trade mark court.