Trade Marks | The Consequences of None Use
In a previous article, ‘Trade Marks: Nature, Purpose, and Enforcement,' we outlined the advantages of Trade Marks and the protection afforded by registration.
While the significant benefits of using Trade Marks are clear, there are potentially adverse consequences if it is not used after registration.
The Trade Mark may become open to challenge pursuant to sections 46(1) and 48 of the Trade Marks Act 1994 (‘the Act’) and the recent Court of Appeal decision in Industrial Cleaning Equipment (Southampton) Limited -v- Intelligent Cleaning Equipment Holdings Co Limited & Another.
Stuart Southall of KANGS comments upon the implications of both the Statutory and Case law.
The Relevant Law
The General Position
- All Trade Marks, once registered, enjoy an initial registration period of ten years which can then be renewed every subsequent period of ten years.
- However, registration cannot be effected until the last six months of each ten-year period.
Circumstances arise where, following registration, a Trade Mark is not used and whilst this is permitted the ‘non-use’ must be within reason.
Currently, the ‘non-use’ period is deemed to be five years.
In the event of a Trade Mark dispute, it is for the Proprietor of the Trade Mark to evidence that it has been used.
Statutory Provision
If the Trade Mark has not been used after five years the Act states:
Section 46
‘Revocation of registration.
(1) The registration of a trade mark may be revoked on any of the following grounds—
(a) that within the period of five years following the date of completion of the registration procedure it has not been put to genuine use in the United Kingdom, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use;
(b) that such use has been suspended for an uninterrupted period of five years, and there are no proper reasons for non-use.
(c) that, in consequence of 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.
(d) that in consequence of the use made of it by the proprietor or with his consent in relation to the goods or services for which it is registered, it is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services.
The Act deals with acquiescence on the part of the Trade Mark Holder as follows:
Section 48
‘Effect of acquiescence.
(1) Where the proprietor of an earlier trade mark or other earlier right has acquiesced for a continuous period of five years in the use of a registered trade mark in the United Kingdom, being aware of that use, there shall cease to be any entitlement on the basis of that earlier trade mark or other right—
(a) to apply for a declaration that the registration of the later trade mark is invalid, or
(b) to oppose the use of the later trade mark in relation to the goods or services in relation to which it has been so used,
unless the registration of the later trade mark was applied for in bad faith’
Effectively, the law states that a Trade Mark owner, knowing of a competitor who owns a similar or identical Mark, cannot deliberately ‘delay’ taking any action against the competitor, for five years and then seek to oppose the competitor’s Trade Mark.
Case Law
In the recent decision of Industrial Cleaning Equipment (Southampton) Limited -v- Intelligent Cleaning Equipment Holdings Co Limited & Another, the Court of Appeal determined that it was appropriate to depart from historic (and well-founded) EU case law to hold that the defence of statutory acquiescence, when considering UK Trade Mark infringement, only requires the earlier Mark owner to have knowledge of use of a later registered Mark for five years, rather than the knowledge of the registration.
Whilst deliberating its decision, it was necessary for the Court of Appeal to consider:
- Use and Registration are different concepts – use affects the market whereas registration (and the recording of the registration) has no impact (on market conditions).
- Providing knowledge of registration is likely to be more difficult (because there may be communications that fall under privilege and cannot therefore be put before the Court).
- The full implications of the relevant case of Budejovický Budvar np v Anheuser-Busch Inc [2011] ECR I-08701 may mean that earlier Mark owners deliberately do not undertake any checks of the (UKIPO) register in order to delay time running (given that the entire purpose of the legislation is to penalise proprietors who are insufficiently vigilant).
- When can it be said that the acquiescence ceased? and
- Passing off – in the Court of Appeal’s ruling, the defence of acquiescence would have prevented the Claimant from advancing a claim for passing off and trade mark infringement.
Consequences For Trade Mark Owners
Having engaged the process of securing a Trade Mark Registration, the owner should:
- ensure that the Trade Mark is used (and the appropriate symbol, being the ® is used),
- upon being aware of a potential competitor(s) seeking an unfair commercial advantage using a similar or identical Mark in the course of their business take the relevant steps,
- ensure that the earlier and registered Trade Mark is protected.
Who Can I Contact for Advice & Help?
The team at KANGS is renowned for delivering exceptional service to every client, be it individual or corporate, regardless of the nature and complexity of the dispute.
We provide expert legal support to help you navigate and resolve Trade Mark related disputes effectively. Our team always take a proactive approach to every issue and would be delighted to assist you.
Please do not hesitate to contact us using the details below:
Tel: 0333 370 4333
Email: info@kangssolicitors.co.uk
We provide initial no obligation discussion at our three offices in London, Birmingham, and Manchester. Alternatively, discussions can be held through live conferencing or telephone.
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