Trade Marks: Invalidity and Revocation

Cert in IP 2020
D R . N O A M S H E M TO V
C E N T R E F O R C O M M E R C I A L L AW S T U D I E S Q U E E N M A RY
R E A D E R I N I P & T E C H N O L O G Y L AW
N . S H E M TO V @ Q M U L . A C . U K
Invalidly vs. Revocation
Invalidity:
Article 4 & 5: A TM may be declared invalid if it was registered in breach of one of the absolute
or relative grounds for refusal.

Revocation:
Four grounds for revocation: Art 19-21 TMD.
the TM has not been used for five years following the date of completion of the registration
(non-use)
the use of the TM has been suspended for an uninterrupted period of five years
the TM has become the “common name in the trade” (generic)
the TM has been used in a way so that it is liable to mislead the public (deceptive)
Revocation
•Date of Revocation
•Who can apply?
•Onus

Rationale: protection for trade marks is justified as a result of their use

◦ “Desire to reduce the number of registered trade marks in order to prevent needless conflicts”
Recital 31 TMD
Revocation for non-use and suspension of use
The relevant period of non-use or suspension of use
- Non-use,
- Suspension of use,
- Resumption of use,
- The three months cut-off period
What is meant by “use of the mark”?
•How to show use? Ansul BV v Ajax BV

•Use as a trade mark:

Non-use of the wordless logo: Specsavers v Asda

Use via associated marks: Anheuser Busch Inc v Budvar

Use of a TM includes use in a form differing in elements which do not alter
the distinctive character of the mark in the form in which it was
registered.
Grounds for Revocation:
non-use/genuine use (I)
Case C-40/01 Ansul BV v. Ajax Brandbeveiliging BV [2003] E.T.M.R. 1032 (85)
The mark MINIMAX was registered for fire extinguishers and associated products; from 1989 no sales of
extinguishers; however sales of component parts of extinguishers, as well as repair and maintenance and
the use of the mark on invoices in relation to these services.
ECJ:
use designed solely to preserve the rights under the mark is not a ‘genuine use’;
genuine use requires real use in the market (aimed at the public) and not just internal use by the
undertaking concerned;
it is necessary to take into account all the facts and circumstances in order to decide whether
commercial exploitation of the mark is real and whether such use is warranted in the economic sector
concerned to maintain or create share in the market;
use does not need to be quantitatively significant in order to be genuine;
use in relation to after sale services could be use which is related to the goods, even though the goods
themselves are not sold anymore.
Grounds for Revocation:
non-use/genuine use (II)
Laboratories Goemar SA v La Mer Technology [2002] ETMR 34
•A French company which made only £800 worth of sales to a Scottish agent.
•J. Jacob: genuine use means use which is not merely design to maintain the mark (adopting the
principle of cases decided under the 1938 Act)
•However, acknowledging the inconsistencies with other languages versions of the Directive
(requiring substantial use), the issue was referred to the ECJ.
•ECJ: even minimal use, not quantitatively significant, may be ‘genuine’, provided that it is deemed
to be justified in the economic sector concerned for the purpose of preserving or creating a market
share for the goods/services protected by the mark. The assessment as to the aforementioned is to
be made by the national court.

- Principles for the assessment of whether there has been a genuine use of a TM established by the
case law of the CJEU also summarised by Arnold J in London Taxi Corp v Frazer-Nash Research Ltd
[2016] EWHC 52 at [219]
Use as a trade mark
•Use which does not align with the essential origin indication function of a mark will not save it
from revocation

•Use in descriptive sense ≠ genuine use

•Use as a corporate name may not itself justify maintenance of the mark

•Evidence of use of a mark on the top of invoices, with addresses etc. does not in itself prove
genuine use

•Every commercial use will not automatically qualify as a genuine use

Use via associated marks
Use of a TM includes use in a form differing in
elements which do not alter the distinctive
character of the mark in the form in which it
was registered

Anheuser Busch Inc v Budvar

Non-use under the TMD: Article 19(1)
A trade mark shall be liable for revocation if, within a continuous five-year period, it has not
been put to genuine use in the Member State in connection with the goods or services in
respect of which it is registered, and there are no proper reasons for non-use.

Genuine Use: Ansul BV v Ajax BV

Non-use: Supermac v McDonalds, EUIPO Cancellation Division, 11.01.19

Proper reasons of non-use: Proper reasons must include reasons based on the existence of
obstacles to use arising independently of the will of the proprietor.
Non-use of a wordless logo (and more..)
‘Genuine use’ to the extent that the differences between the form
in which that trade mark is used and that in which it was
registered do not change the distinctive character of that trade
mark as registered.

Where a Community trade mark is not registered in colour, but the

proprietor has used it extensively in a particular colour or
combination of colours with the result that it has become
associated in the mind of a significant portion of the public with
that colour or combination of colours, the colour or colours which
a third party uses in order to represent a sign alleged to infringe
that trade mark are relevant in the global assessment of the
likelihood of confusion or unfair advantage under that provision.
Proper reasons for non-use
ECJ Armin Hӓuple v Lidl Stiftung & Co
The trade mark proprietor needs to demonstrate that:
1. The obstacle preventing it from using the mark arose independently of the proprietor’s will,
◦ Article 19 TRIPS

2. There is a direct relationship between the obstacle and the failure to use the mark
◦ Sufficient: eg, obtaining authorisation for a name from a regulatory authority
◦ Insufficient: eg, bureaucratic obstacles

3. The obstacle is such as to make the use of the mark impossible or unreasonable
◦ Cases of impossibility are rare
Generic Marks: Article 20(a)
The registration of a trade mark may be revoked
because as a consequence of the acts or inactivity of
the proprietor, it has become the common name in
the trade for a product or service for which it is
registered.

Re Gramophone Company’s Application

Generic Marks: Article 20(a)
•Requirement of vigilant conduct:
◦ Revocation can only be successful if it has become generic as a consequence of the acts or
inactivity of the TM proprietor

•Acts to avoid a trade mark becoming generic:

• Policing (eg monitoring marks, bringing infringement claims)
• Do not make descriptive uses of trade mark in own ads
Misleading Uses: Article 20(b)
The registration of a trade mark may be revoked where as a consequence of the use made of it
by the proprietor or with his consent in relation to goods or services for which it is registered, it
is liable to mislead the public, particularly as to their:
- Nature
- Quality
- Geographical origin

Orwoola Trade Mark

Revocation and Invalidity: Invalidity (as
applied in the UK under S46 & 47)
•Where the mark was registered in breach of the criteria for absolute and/or relative grounds for
refusal.
•That applies only to the point of time of registration and not to any subsequent changes (e.g.
loss of distinctive character).
•Any person may apply.
•Effect: void ab initio, i.e. as though was never registered. However, there is no effect on past and
closed transactions.

Defences: relative grounds of refusal – consent

absolute grounds for refusal s.3(1)(b)-(d) – acquired
distinctiveness after registration.
Invalidity due to ‘bad faith’
UK Trade Marks Act 1994 or Directive 2008/95/EC do not define ‘bad faith’. However,
• In the UK an applicant must make a statement that she has a bona fide in intention to use the mark.
• So, when an application is made: (1) without any intention to use the mark; (2) for a scope wider than the
intended use; (3) in order to block others from making use of the mark, bad faith may be established.

Note: in the UK ‘bad faith’ may be raised as

• opposition – S.3(6)
• Invalidity – (S.47)
• counteraction for an acquiescence defence S.48(1) – see slide below)

See
Lindt v Hauswith [2009] IPQ 229 (C-529/07)
Sky Plc & Ors v SkyKick UK Ltd & Anr (Case C-371/18)
 Invalidity due to ‘bad faith’ (Cont’)
Sky Plc v Skykick UK Ltd [2020] EWHC 990 (Ch)
At High Court
1. May the use of broad may be considered unclear and lacking in precision so as to justify revocation?
2. Goods under broad terms such as ‘telecommunication services’ are too variable to be sufficiently clear and precise?
3. Could registration without any intention to use render a mark invalid, or partially invalid?

EUCJ
4. No.
5. No.
6. Yes.

Back at the High Court, before LJ Arnold – inter alia paring down some of terms, such as ‘software services’ to
"computer software supplied as part of or in connection with any television, video recording or home entertainment
apparatus or service; computer software supplied as part of or in connection with any telecommunications apparatus or
service; electronic calendar software; application software for accessing audio, visual and/or audio-visual content via
mobile telephones and/or tablet computers; games software". 
Invalidity: Acquiescence (Article 9)
Does not apply to claims for revocations for non-use.

Applies to an owner of an earlier mark/right with respect to relative grounds for refusal.

Acquiescence by an owner of an earlier mark/right for a continuous period of five years.

The proprietor of the earlier right must have been aware of such use.

As a result the owner of the earlier mark/right is not entitled to apply for a declaration of invalidity.