How to Remove a Registered UK Trade Mark

Stephen Baker and Oliver Williams of our Dispute Resolution team explain how to invalidate or revoke a UK trade mark.

Businesses with established brands may find themselves in the unfortunate situation of discovering that another company or individual has registered UK trade marks at the Intellectual Property Office (‘IPO’) which negatively impact their trade.

If you wish to contest a registered trade mark which is similar to yours, you may have legal recourse against the owner.

What’s the difference between ‘invalidating’ and ‘revoking’?

Generally speaking, an invalidation application is made where a trade mark should not have been registered in the first place. It is similar to an opposition action except it is brought after the trade mark has been registered instead of during the application phase.

On the other hand, a revocation application is made on specific grounds, relating to a lack of genuine usage of the trade mark by the owner or usage of the mark which is likely to mislead the public.

Another key term to be aware of is ‘surrendering’ a trade mark. This is where the owner of a registered trade mark voluntarily removes their trade mark from the IPO, for example as part of a negotiation.

How do I invalidate a trade mark?

Potential grounds for invalidation of a registered trade mark include:

  1. The trade mark is identical or similar to your earlier trade mark or earlier right in the same or similar classes which has been put to genuine use in the last five years.
  2. The trade mark’s usage is contrary to the law of passing off, or takes unfair advantage of the distinctive character or reputation of your earlier mark or right.
  3. The trade mark was applied for in bad faith and should not have been registered. For example, it was created in order to wrongfully prevent someone else from using the mark.

For an explanation of trade mark ‘classes’, registration, and opposition, please consult our previous article which can be found here. For more on passing off and trade mark infringement, please consult our previous article which can be found here.

An invalidation application carries a fee of £200 which must be paid to the IPO. It is important that the correct application form is used and filled out accurately. If you are a rightsholder who wishes to invalidate a registered trade mark, instructing our experts to assist you is a reliable way of ensuring that your application is dealt with properly.

How do I revoke a trade mark?

Potential grounds for revocation of a registered trade mark include:

  1. The trade mark has not been genuinely used for the first five years following its entry on the register, and there are no proper reasons for non-use.
  2. The trade mark has not been genuinely used for any subsequent continuous five year period, and there are no proper reasons for non-use.
  3. Due to the owner’s usage of the mark in relation to the goods or services covered in the registration, the mark is likely to mislead the public.

A revocation application also carries a £200 fee. It is even more important to seek expert assistance in a revocation application, as it may prove easier for a trade mark owner to evidence that their mark has been used or there are good reasons for its non-use, than it is for them to contest your earlier right.

What are the likely outcomes?

If your invalidation or revocation application is successful, then the trade mark will be removed from the IPO registry and the owner will lose their rights derived from it. It may take many months to get to this point if they choose to contest your application. The IPO may award you some of your costs, but this is not guaranteed.

If your application is unsuccessful then you may be liable to pay some of the costs of the trade mark owner. It is important to take legal advice in relation to any prospective application at the IPO to ensure the greatest chance of success.

It may well be the case that, either before or during proceedings, you choose to negotiate a commercial agreement with the trade mark owner whereby they surrender or vary their mark so that it no longer adversely affects your business. Having a legal specialist to assist you in such negotiations ensures that you are not unknowingly entering into a detrimental agreement.

What now?

Our specialist solicitors are skilled in identifying legal issues surrounding intellectual property rights and providing practical solutions to our clients’ disputes. For more information on the contents of this article or advice on the issues raised, please contact us to speak to a member of our Dispute Resolution team.

Stephen Baker
Partner, Head of Dispute Resolution
View profileContact Us
Oliver Williams
View profileContact Us

This reflects the law and market position at the date of publication and is written as a general guide. It does not contain definitive legal advice, which should be sought in relation to a specific matter.

Latest Legal Insights

Best Law Firms 2024

Herrington Carmichael has once again been named in the Times Best Law Firms. We were first listed in 2023 and have once again made the Best Law Firms list for 2024.  

www.thetimes.co.uk/article/herrington-carmichael

Best Law Firm 2024