TMs Invalidity and Revocation - Slides 1
TMs Invalidity and Revocation - Slides 1
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
- 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 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
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.
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.
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.
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.