14 - Revocation and invalidation

Question 1

What’s the difference between revocation and invalidation?

Answer 1

A trade mark can be revoked if it ceases to meet the ongoing requirements of
the Trade Marks Act.

An invalid trade mark is one that did not ever meet the requirements of the Trade
Marks Act.

Question 2

What are the effective dates of revocation and invalidation?

Answer 2

Revocation - the date of the application for revocation, or if the grounds existed at an earlier date, then that date.

Invalidation - the application is deemed never to have been made provided that this shall not affect transactions past and closed.

Question 3

What are three examples of grounds of revocation?

Answer 3

The mark has not been used, or use has been suspended, for a period of five
years from registration, without good reason;

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;

That in consequence of the use made of it, it is liable to mislead the public.

Question 4

Give some of examples of grounds for invalidity

Answer 4

At the date of registration, it did not possess distinctiveness, and has not
acquired distinctiveness in the meantime.

Relative grounds, provided that the use criteria of the senior mark are met.

It infringed a copyright

It infringed a design right

Its registration was contrary to the laws of passing off.

Question 5

Who can apply for revocation on grounds of non-use?

Answer 5

anyone

Question 6

Can part of a registration be invalidated only?

Answer 6

Yes

Question 7

What should invalidation based on an earlier registration or application include?

Answer 7

representation of the mark

details of the jurisdiction in which the mark is registered/applied for i.e. UK/WIPO etc.

registration/application number

goods/services in respect of which mark is registered and which form the basis of the invalidation action

where neither s.47(2A)(a) nor (b) apply a statement of use/proper reasons for non-use

Question 8

What should invalidation based on an unregistered mark include?

Answer 8

Representation of the mark

Goods/services in which the invalidator is claiming earlier use

Details of when/where earlier right was used

Date of first use