revocation

Revocation & Invalidity

If you wish to remove a Trade Mark from the register, or if your registrations are attacked, we can advise and act on your behalf.

The nature of the Trade Mark registration process means that despite achieving registration it may also become possible to subsequently remove the trade mark registration from the Register.

There are two ways in which a registered trade mark may be removed from the Trade Marks Register. The first is through Revocation whilst the second is through Invalidity.

As for Revocation, it is accepted that the trade mark was initially registered correctly but that the trade mark should no longer remain on the Register due to one of three main reasons. The first is that the trade mark registration, having been in existence for more than 5 years, has not been used in the United Kingdom on goods or services for which it is registered for the last 5 years and there are no proper reasons for this having been the case. The second is that the trade mark has now become generic and is the common name for the goods or services for which it is registered. The third is that use of the trade mark is likely to mislead the public in some way.

By far and away the most common ground for revocation is non-use. To determine whether a trade mark registration is more than 5 years old and has not been used in relation to the goods or services for which it is registered for the past 5 years requires some investigation. Nucleus IP Limited has close relationships with several firms of investigation agents and are always able to obtain not only the necessary information but also any evidence should it prove necessary in order to commence a cancellation action.

Invalidity is a claim for cancellation of a trade mark registration on the grounds that the trade mark should not have been accepted for registration in the first place. The most common claims are that there already existed a prior application or registration for the same or a similar mark in relation to the same or similar goods or services, or that the same or a similar trade mark had been widely used in the market place for a considerable period of time such that subsequent registration by another party should not have been possible. Alternatively it may be possible to claim that the trade mark is entirely descriptive of the goods or services for which it is registered.

Whether you wish to cancel an existing registration or another party wishes to cancel one of yours, the UK Trade Marks Registry advise that you should always consider obtaining professional advice. Not only is Nucleus IP Limited a professional firm of registered trade mark attorneys, but our experience and expertise is such that we are always confident of our advice and willing to act on your behalf.