Applications can be made to invalidate trade marks under certain conditions
Whether you wish to invalidate a trade mark or have received a TM26(I), this guide will help you understand what's in play.
Words by Dr Martin Douglas Hendry
A trade mark is a sign or symbol that distinguishes the goods or services of one business from another.
Trade mark registration provides exclusive rights to use the mark and prevents others from using it without permission.
However, trade mark registration is not always guaranteed and can be invalidated under certain circumstances.
In such circumstances, an applicant may seek to invalidate the trade mark in whole or in part through the submission of a TM26(I) form.
Should you have received a TM26(I) or wish to invalidate a trade mark, it is important to get expert advice in order to put you in the best possible position.
In this blog post, we will discuss the grounds for trade mark invalidation in the UK.
Grounds for Trade Mark Invalidation in the UK
According to the resources available on the UK government website here, invalidation proceedings can be brought, should the trade mark in question have the following attributes:
Lack of Distinctiveness
To be eligible for trade mark registration, a mark must be distinctive and capable of distinguishing the goods or services of one business from another.
Ultimately, to function as a recognisable trade mark, which distinguishes one set of good or services from another, trade marks should stand out and have a unique appeal to the buying customer.
A lack of distinctiveness is a common ground for trade mark invalidation, wherein after a registration is made, a complainant will seek to assert that the trade mark is not distinct in the way outlined above.
A mark that describes the goods or services it represents cannot be registered as a trade mark.
The mark must be able to distinguish the goods or services from those of another business, and businesses are entitled to describe what they do without fear of trade mark infringement being an issue.
For example, a company seeking a trade mark for the word mark “London Luxury Cars” cannot reasonably enforce the mark on any other luxury car company in London. As such, the mark can be considered descriptive and if registered, may likely fall foul of an invalidation claim.
Deceptiveness or Misleading Nature
A mark that is deceptive or misleading cannot be registered as a trade mark. The mark must not mislead consumers about the quality, origin, or other characteristics of the goods or services.
For example, where a trade mark positions a product to have originated from a certain geography that did actually not originate from.
Ultimately, a trade mark functions as a mark that designates the unique origin, authenticity and quality (by way of reputation) of goods, and should not be deceptive in this function.
Should this be the case it may fall foul of an invalidity assertion.
A trade mark can be invalidated if it has not been used for a continuous period of five years, and there are no valid reasons for non-use.
The trade mark registries are congested, and as such it is important that should a registration be made, that this trade mark is put to use. As such, most registries have a use requirement in order for the trade mark to not attract an invalidity claim.
It is often the case, that a trade mark registered in a number of different classifications will find invalidity claims brought within 5 years, in classifications where they have not been used.
As a result it is important, at the point of registration, to seek to register the trade mark in classifications which will be used within a 5 year period of it being registered.
A trade mark registration obtained in bad faith can be invalidated.
Bad faith can be established if the trade mark applicant had knowledge of an earlier right, or if they intended to deceive consumers.
Bad faith registrations are often seen where someone seeks to register a trade mark either stifle a competitor, in the form of a so-called “trade mark squatter” – who registers a trade mark in order to seek to then sell it on to an entity at an inflated price.
If proven, within the UK this would be seen as a bad faith registration and would likely result in a successful invalidity claim.
A trade mark can also be invalidated if it conflicts with an earlier right, such as a prior registered trade mark, unregistered trade mark, or other intellectual property rights.
Whilst the publication of a trade mark leads to an opposition period, where other companies may seek to stop a trade mark being registered. Should they not have opposed the trade mark in the first instance, they may still then seek to invalidate the trade mark later.
As such, it is important to make sure that effective brand clearance has been achieved in the first instance, as even if a trade mark is registered, it can fall foul to invalidity claims predicated on pre-existing rights if they have not been considered.
If a trade mark is invalidated, it loses all legal protection. This means that the trade mark owner cannot take any legal action against others who use the same or similar mark. The consequences of trade mark invalidation can be severe, including loss of business reputation and revenue.
In conclusion, trade mark registration is an important legal protection that provides exclusive rights to use a mark. However, trade mark registration is not always guaranteed, and a mark can be invalidated under certain circumstances. To avoid trade mark invalidation, it is important to conduct a thorough trade mark search and registration process. If you have any questions about trade mark registration or need legal advice, consult a qualified trade mark specialist.
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DISCLAIMER: The content within this post is for educational purposes only. Virtuoso Legal does not take any responsibility for those that use this information and waives any liability for any resulting effect on your personal or commercial circumstances. If you are experiencing an issue and need advice, we strongly encourage you to contact a solicitor to identify your best course of action.