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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 (1)(a))

· 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 that date.


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 International Trademark Association, the Solicitors' Association of Higher Court Advocates and we are the appointed Solicitors to the largest webdesign association in the world, the United Kingdom Website Designers Association.


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Article Published/Sorted/Amended on Scopulus 2007-05-03 21:58:57 in Legal Articles

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