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How to cancel a trade mark. Part 2

Written by Michael Coyle on 15 April 2014

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One of the grounds for absolute invalidity is a lack of distinctive character; that the trade mark is in generic use, or that the original application was made in bad faith.

Relative grounds for applications will be made if the trade mark in question conflicts with earlier rights held under national or EC law by a third party.

Examples of this include the case of Inter-Ikea Systems BV v OHIM, Case T-112/06. In this case, IKEA applied to have a figurative trade mark ‘IDEA’ declared invalid; however this claim was rejected, in a decision upheld by the EU General Court. 

In the case of registration no. 2350041, case 0-240-06, where O2 Holdings Ltd succeeded in having a trade mark containing the words’ 09’ declared invalid.

So clearly the outcomes of such cases are not clear-cut

Relative grounds for invalidity can be defeated by showing that the applicant acquiesced in the subsequent mark’s use for a five-year period (provided that the later mark was not registered in bad faith).

Revocation

The four grounds for revocation of a registered trade mark are:

1. There has been no use of the trade mark by the proprietor or its licencees for five years after its date of registration and there are no valid reasons for its non-use.

2. The same lack of use, without valid reason, for any other five-year period.

3. The mark has become the common name in the relevant business for a product or service due to the proprietor’s acts or lack of activity.

4. The mark is likely to mislead the public due to the way the proprietor has used it or consented to it being used, especially in relation to the nature, quality, or geographical origin of the product.

use. As with invalidity, partial declarations of revocation are possible, as, for example happened in the case of Reed Consumer Books Ltd v Pomaco Ltd [2001] E.T.M.R. 92.

Section 46 of the Trade Mark Act and Article 15 of the Trade Mark Regulations cover non-use. There is no shortage of case law relating to genuine use and reasons for non-use. When an application for revocation succeeds, the effective date is the date of application for revocation.

This article was written by Martin Yarde a second year law student at Solent University and Michael Coyle of Lawdit

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