Invalidity, Revocation and Defences

Question 1

What are the 4 grounds for revocation laid out in Section 4 of the Trade mark directive?

Answer 1

If the TM has not been used for 5 years following the date of completion of registration
If the use of a TM has been suspended uninterrupted for a period of 5 years
If the TM has become a common name in the trade (generic)
The TM has been used in a way so that it is liable to mislead the public (deceptive)

However, if use of the mark is resumed more than 3 months before an action is filed, it will not be revoked.

Question 2

What is the rationale for revocation nor non-use or suspension of use?

Answer 2

Protection for TM is justified as a result of their use.

Question 3

In which case were the principles for revocation summarised?

Answer 3

W3 Ltd v Easygroup Ltd [2018] EWHC 7

Genuine use means actual use (more than merely token) of the trade mark by the proprietor or by a third party with authority to use the mark ….

Consistent with the essential function of a trade mark, which is to guarantee the identity of the origin of the goods or services to the consumer or end user by enabling him to distinguish the goods or services from others which have another origin: ….

Relating to goods or services which are already marketed or which are about to be marketed and for which preparations to secure customers are under way, particularly in the form of advertising campaigns: …. Internal use by the proprietor does not suffice: …. Nor does the distribution of promotional items as a reward for the purchase of other goods and to encourage the sale of the latter: …. But use by a non-profit making association can constitute genuine use: ….

The use must be by way of real commercial exploitation of the mark on the market for the relevant goods or services

All the relevant facts and circumstances must be taken into account in determining whether there is real commercial exploitation of the mark

Use of the mark need not always be quantitatively significant for it to be deemed genuine. Even minimal use may qualify as genuine use if it is deemed to be justified in the economic sector concerned for the purpose of creating or preserving market share for the relevant goods or services. on for the proprietor.

It is not the case that every proven commercial use of the mark may automatically be deemed to constitute genuine use: …

The territorial borders of the Member States should be disregarded in the assessment of whether a trade mark has been put to genuine use in the Community: ….

While it is reasonable to expect that a Community trade mark should be used in a larger area than a national trade mark, it is not necessary that the mark should be used in an extensive geographical area for the use to be deemed genuine, since this depends on the characteristics of the goods or services and the market for them: ….

It cannot be ruled out that, in certain circumstances, the market for the goods or services in question is in fact restricted to the territory of a single Member State, and in such a case use of the Community trade mark in that territory might satisfy the conditions for genuine use of a Community trade mark: ….”

Question 4

What are some further considerations of whether marks are still valid?

Answer 4

Marks with a distinctive character can undergo some changes and still be valid
But drastic changes may constitute non-use
Genuine use has to be shown for all classes otherwise the mark may be revoked in reference to those unused classes.

Question 5

How was genuine use defined in Ansul BV v Ajax, C-40/01?

Answer 5

Genuine use’ must therefore be understood to denote use that is not merely token, serving solely to preserve the rights conferred by the mark. Such use must be consistent with the essential function of a trade mark, which is to guarantee the identity of the origin of goods or services to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin

Using the mark solely for spare parts of fire extinguishers did not constitute genuine use as genuine use requires real use in the market (aimed at the public) and not simply internal use for the undertaking concerned.

Use does not need to be quantitatively significant to be genuine

use in relation to after sale services related to the goods could be genuine use