When can you challenge a UK trade mark registration?

Challenging a registered trade mark

Once a trade mark is registered in the UK, there may be the option to challenge it through invalidation or revocation proceedings.

A. Invalidation

Invalidation can be applied for if the trade mark should not have been registered in the first place.

Grounds for invalidation include:

• The mark was registered despite conflicting earlier rights
• The mark was registered in bad faith
• The mark is devoid of any distinctive character or consists exclusively of signs which may designate characteristics of the goods/services

If successful, the registration is deemed never to have existed - i.e., invalid from the outset.

B. Revocation

Revocation is used to challenge a registered mark if it is no longer (or never was) put to genuine use. For there to have been genuine use the mark must have been used, in the UK, by the proprietor or with their consent, in relation to the goods/services registered.

Grounds for revocation include:

• The trade mark has not been put to genuine use in the UK for five years from registration (and there are no proper reasons for non-use)
• The trade mark has not been put to genuine use in the UK for five continuous years (and there are no proper reasons for non-use)
• The proprietor has allowed the mark to become generic
• The proprietor has allowed the mark to become misleading 

If revocation is successful, the trade mark shall be revoked from a specified date. Depending on the action, the trade mark may still be deemed to have existed until the specified date.

When should you consider challenging a trade mark registration?

You may want to take action if:

• A newly registered mark is confusingly similar to your own trade mark
• A competitor is squatting on a mark with no intention to use it
• A trade mark registration is blocking your application, and you believe it is no longer in use
• A trade mark registration has been used to oppose/attack one of your rights

It is important to note that the right challenge is scenario dependent, and timing is key. 

Considerations before filing

• Why is this being done?
• How and when should this be done?
• Would negotiations be more cost-effective?
• What could you lose?

Conclusion

Whether you are protecting a trade mark, or asserting your trade mark in a crowded market, understanding when and how to challenge trade mark registrations can give you a crucial competitive advantage. 

If possible, you should try to challenge problematic trade marks before they proceed through to registration. For more information on preventing trade marks from proceeding through to registration, please see our previous article here.

If you have any further questions, we recommend that our advice is sought.