Challenging the Validity of a Registered Trade Mark
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It is possible for a third party to challenge the validity of a registered
trade mark by applying to have its registration invalidated or revoked.
The bases for invalidity are the same as the absolute and relative grounds.
An example of an absolute grounds type basis is that the trade mark is
descriptive or generic.
An example of a relative grounds type basis is that the third party has prior
rights in identical sign, used in the course of trade, in relation to identical
goods or an identical or similar sign, used in the course of trade, in relation
to identical or similar goods resulting in a likelihood of confusion. If such a
basis is used the action must be taken within five years of the registration.
If the action for invalidation is successful the registration will
effectively be deemed never to have existed.
The main bases for revocation are as follows:
· the trade mark has not been properly used within a period of five year from
the date of registration and there is no proper reason for this. (section 46
· that such proper use has been suspended for a continuous period of five
years and there is no proper reason for this (section 46 (1)(b))
· the trade mark has become generic i.e. the mark has become a term which is
commonly used in the particular trade as the name of a type of product rather
than identifying only the specific product of the proprietor; for example
‘hoover’ is now a generic term for a vacuum cleaner. (section 46 (1)(c))
· as a result of the use made of the mark by the proprietor it is “liable to
mislead the public, particularly as to the nature, quality or geographical
origin of those goods or services.” (section 46 (1)(d))
If an application for revocation is successful the registration will be
deemed to cease to have effect from the date of the application, unless it can
be shown to the satisfaction of the registrar or court that the relevant grounds
existed prior to the application in which case it will cease to have effect from
About the Author
Lawdit Solicitors offer services and
advice for litigation, commercial contracts, Intellectual Property and IT legal
agreements. We are experts in commercial law with a heavy emphasis on
Intellectual Property, Internet and e-commerce law. Lawdit is a member of the
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Article Published/Sorted/Amended on Scopulus 2007-05-03 21:58:57 in Legal Articles