TM Revocation Flashcards
When are marks removed from the TM register? Where are the relevant rules found?
s47 TMA - declaration of invalidity (breach of absolute / relative grounds)
s46 TMA - Revocation
What are the relevant rules for revocation, found in s46 TMA?
s46 - revocation takes place when…
(a) mark registered but not used for 5 years
(b) mark used after registered, but then not used for uninterrupted suspended period of 5 years
(c) mark become generic due to INACTIVITY of owner
(d) mark used in a deceptive manner
What can an owner do to prevent their mark becoming generic?
they must actively exercise vigilant conduct
e.g. can advertise and prevent generic use of competitors
Who can bring an application for revocation, and where?
any person (commonly a competitor)
to UKIPO or EUIPO
What are the main cases concerning non-use? (2)
Einstein Trade Mark 2007
Anheuser Busch v Bedejovicky 2003
What rule is established in Einstein Trade Mark case
use must be as a trade mark and be by the TM or with his consent
HOWEVER - no need for owner to exercise control over the use of goods, mere economic link between them is sufficient
Can a sign be regarded as in use, if it differs from the mark as registered? Case?
YES -
- must identify differences between mark as regitered and sign used
- must see whether the distinctive nature of the mark is altered - if no, then in use
Anheuser Busch v Bedejovicky Budvar 2003
Which cases concern genuine use? (2)
Ansul BV v Ajax Brandbeveiligung
La Mer Technology v Laborotoires Goemär
What rule is established in Ansul BV v Ajax brandbeveiligung?
there must be use on the market (not internally) to create / preserve an outlet for the goods / services, having regard to all of the circumstances, including:
a. the nature of the goods
b. characteristics of the market
c. frequency of use of the market
What rule is established in La Mer Technology v Laborotoires Goemär?
minimal use can still qualify as genuine use
in this case, sale of goemärs branded products amounted to §800 only
Held: Goemär tried to honestly gain a share in the market, can’t be punished for failing
Which cases concern place of use?
Elle Trademarks 2008
Euromarket designs v Peters
Leno Menken case
Sofa Workshop case 2015
What are the main rules concerning national use? Cases?
adverts released in another country may be genuine use if also available nationally - Elle Trademarks 2008
use on internet may be genuine if directed at national consumers - Euromarket designs v Peters
What are the main rules concerning EU use? Cases?
When establishing genuine use in the EU, geographical scope is considered / use in a single member state may be considered - Leno Menken Case
Usually, use in more than 1 member state is required
- Sofa Workshops
What is the defence used against non-use? Case?
proper reason for non-use
Häupl v Lidl
What test is established in Häupl v Lidl?
- obstacle preventing use arose independent of will
- direct relationship between obstacle and non-use
- obstacle makes use of mark impossible / unreasonable
