The activities of rogue trade mark applicants have recently come to the attention of brand owners as a cause for concern. An increasingly common practice seems to be for these applicants to apply for trade marks which are already registered by existing brand owners and, in an effort to progress their rogue applications, apply to revoke (cancel) the pre-existing trade marks on the grounds of “non-use”. Whilst this should not be cause for alarm amongst the majority of trade mark owners it does remind us of the importance of using a trade mark once it has been registered.
The nature of the trade mark registration process means that despite achieving registration it may also become possible for your trade mark to be removed from the register without your permission on the grounds of non-use. It is becoming increasingly important that registered trade marks are used in order to maintain their validity and their ability to be enforced against third parties (i.e. those who copy your branding). Non-use is by far and away the most common ground for revocation. If, after registration, a trade mark has been in existence for more than 5 years (in the UK and EU) but has not been used on the goods or services for which it is registered, and there are no proper reasons for this having been the case, then the trade mark can be revoked.
Use of the trade mark needs to be genuine commercial use and not just token use, and needs to be in the country in which the mark is registered; in the case of an EU trade mark (“EUTM”), a reasonable amount of use in two or more EU countries (i.e. the UK and another member state) should suffice. The amount and frequency of use will depend upon the nature of the goods or services, and on the case in question.
It is not sufficient to simply suggest that the mark has been used, or produce a catalogue or a price list showing the mark. Instead there needs to be a clear chain of documentation showing use of the mark in relation to the goods or services for which it was registered. Additionally, if there has been valid use in one class of goods or services, then this use will not assist you in relation to the other classes of goods or services, unless they are very similar.
Trade mark owners should therefore conduct annual reviews of their trade mark portfolios to work out which marks are and aren’t in use. If they find that that their branding has moved on since their last trade mark registration then they should file a new trade mark application, covering the new branding, as soon as possible.
For more information on trade mark registrations and costs, please contact Briffa on 020 7288 6003 or email email@example.com.
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