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Matters Arising during the Life of a Trade Mark

INTRODUCTION

This chapter deals with a range of matters that might happen during a trade mark’s lifetime – the most important of them, revocation and invalidity, resulting in its death. Indeed, a trade mark which suffers invalidation is not merely dead, but deemed never to have existed – an attractive proposition to someone who is alleged to have infringed it, as they will be able to see of an infringement claim very decisively with a counterclaim. A counterclaim for revocation is also a handy supplement to a defence.

Alteration

Registered trade marks may be altered only in limited circumstances. Indeed, section 44 prohibits amendments of registered marks, but provides exceptions for alterations of the proprietor’s name and address appearing as part of the mark where the alteration does not substantially affect the identity of the mark.

The rules provide for publication of the alteration and for any person who claims to be affected by it to object to the alteration.

Section 35 of the 1938 Act provided for the alteration of a registered trade mark in any manner provided only that it did not alter the identity of the registration substantially. The new law is in line with the Community Trade Mark Regulation.

It is for the registrar to decide whether an alteration substantially affects the identity of the mark. For an alteration to be allowed, the name or address should be of only peripheral importance to the mark and have no material impact on the perception of the mark.

Surrender

A registered trade mark may be surrendered by the proprietor. The surrender may relate to some or all of the goods or services for which the mark is registered.

The Act provides for rules to be made dealing with the manner and effect of surrender, and to protect the interests of other persons having a right in the mark.

The 1994 Act makes no difference of substance to the position under the 1938 Act as far as surrender is concerned. The provisions safeguarding the position of a third party with an interest in the mark is however new, reflecting the provisions of the Community Trade Marks Regulation.

Partial surrender may be effected by replacing the specification of goods for which a mark is registered by a narrower specification. The mark may therefor remain on the Register for a narrower range of goods: or it may be removed altogether.

The Act provides for rules to be made covering the procedure to be followed, the fees to be paid, the effective date of surrender and any implications for other registered and pending marks.

The rules which may also be made to protect other parties who have interests in the mark may cover include licensees and chargees. Surrender of the registration would leave such a person’s interests at risk. The Act says that the rules might provide for the proprietor to have to get the consent of the other interested person prior to surrendering the rights, or they might require that the proprietor prove that the other person has been notified of the intention to surrender, with a waiting period before the registration of the surrender to allow the other person time to object.

Revocation

Revocation is dealt with in section 46, which retains most of the 1938 Act’s provisions in this area. There is no requirement for locus standi – anyone may apply to have a registration revoked.

Non-use

Registration is vulnerable to cancellation if the mark is out of use for five years. It does not help if there has been use on goods of the same description or on associated goods or services: this provision from the 1938 Act has been dropped, to comply with Articles 10 and 12 of the Directive.

A non-use problem arises if the mark has not been put to genuine use within five years after ‘the completion of the registration procedure’ (section 46(1)(a)). This means the date on which the mark was actually registered, not the effective date form which protection runs.1 Even if the mark has been put to genuine use within the appropriate time after registration, it may still be revoked if the use has been suspended for five years. This period must be uninterrupted, and must be without proper reason (section 46(1)(b)). The reason for these rather draconian rules (tempered by the fact that they are not automatic, and someone has to take action) is that the Register should be an accurate reflection of what trade marks are actually being used. Trade mark owners may not create stockpiles of trade marks that they hope might eventually prove useful.2

The use must be in the UK, and must be on the goods or services for which the mark is actually registered. The use must be genuine, that is on a commercial scale and not merely ‘colourable’, and must be by the proprietor or with its consent. The Court of Justice tells us that ‘use’ is ‘genuine’ where the mark is used in accordance with its essential function3, which (following the Arsenal case) means that the mark must guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Merely token use, undertaken just to try to keep the trade mark alive, will not be considered ‘genuine’.

Deciding whether the alleged use is ‘genuine’ entails having regard to all the facts and circumstances, including in particular whether other traders would regard the use as justified to maintain or create a share of the market for the relevant goods or services. The nature of the goods or services, the characteristics of the market, and the scale and frequency of the use of the mark also have to be taken into account. In Ansul, use could be genuine even though the goods for which spare parts and consumables were supplied were no longer available new.

The Court will also consider the size4 and nature of the trade mark owner’s business. A voluntary, non-profit-making organisation might get away with use only on stationery5. What matters is not the amount of use, but the quality of that use: the volume of sales might be small, but that is not the important matter. In Laboratoires Goëmer v La Mer Technology Inc.6 sales of only £800, made to an intermediary which went into liquidation, sufficed because they had been at arm’s length, title had passed to the buyer, and the purpose had been to set up a retail outlet.

Use by a licensee counts as use by the proprietor whether or not the licence is registered. This marks a major difference between the 1994 Act and its predecessor, which allowed only use by registered users to count in this way.

If there are proper reasons for non-use the registration may be saved. They have to be obstacles that arise independently of the will of the proprietor of the mark.7 The obstacles must also have a direct relationship with the trade mark, so that its use is impossible or unreasonable.8 Unavailability of raw materials or of the goods for which the mark is registered, or some other special reason in the trade, or the unexpected and serious ill-health of the proprietor of the registration, could suffice: the Act is not specific.

Because this provision implements mandatory provisions of the Directive – Articles 10 and 12 – the legislation could not be more specific about what constitute proper reasons. The government resisted even an attempt to specify that proper reasons were reasons beyond the reasonable control of the proprietor. Nevertheless, that might prove to be a pretty accurate formulation of the matter.

Several cases have dealt with whether promotional use will suffice to save a registered trade mark from revocation. In Premier Brands UK Ltd v Typhoon Europe Ltd9 Jacob J thought that it would, and later cases in the Court of Justice10 which real with what amounts to ‘trade mark use’ support this view, although of course they are concerned with infringement and have no direct bearing on the issue of non-use. In Case C-495/07, Silberquelle GmbH v Maselli-Strickmode GmbH11 the Court of Justice indicated that there was no genuine use of the mark (WELLNESS, registered for drinks) when it was used on bottles of alcool-free drink given away to buyers of clothes sold under the same mark, saying:

19 … it is essential, in the light of the number of marks that are registered and the conflicts that are likely to arise between them, to maintain the rights conferred by a mark for a given class of goods or services only where that mark has been used on the market for goods or services belonging to that class.
20 ... that condition is not fulfilled where promotional items are handed out as a reward for the purchase of other goods and to encourage the sale of the latter.
21 In such a situation, those items are not distributed in any way with the aim of penetrating the market for goods in the same class. In those circumstances, affixing the mark to those items does not contribute to creating an outlet for those items or to distinguishing, in the interest of the customer, those items from the goods of other undertakings.
22 In the light of the foregoing considerations, the answer to the question referred is that Articles 10(1) and 12(1) of the directive must be interpreted as meaning that, where the proprietor of a mark affixes that mark to items that it gives, free of charge, to purchasers of its goods, it does not make genuine use of that mark in respect of the class covering those items.

‘Use’

Use of a trade mark includes use in a form differing in elements which do not affect the distinctive character of the mark. This is required by the Directive and by the Paris Convention (Article 5C(2)). Colour, type of lettering, the address of the proprietor, and other similar matters could be changed without altering the distinctive character of the mark. The narrowness of this principle was well illustrated in Neutrogena v Golden Ltd t/a Laboratoires Garnier 12 where use of the mark NEUTRALIA did not support the registration of NUTRALIA. In the light of that decision, it should come as no surprise that VENICE SIMPLON ORIENT EXPRESS differed fatally from the registered mark, ORIENT EXPRESS.13 Similarly, in United Biscuits v Asda Stores Ltd 14 the cartoons of penguins were insufficiently similar to those on the register to avoid revocation.

Use in the United Kingdom includes affixing the mark to goods or packaging solely for export.

Revocation for non-use is not available if the mark has become used again before the application for revocation is filed. The use must again be genuine, and if it was started or restarted within the three months immediately preceding the application for revocation it will be disregarded. The only exception to this last provision is where the proprietor (or a licensee) has started making preparations to use the mark before becoming aware that the application might be made.

Genericide

Section 46(1)(c) provides for the revocation of a mark which has become generic. When this happens, it would be wrong for the proprietor to be allowed to maintain exclusive rights in a word which has become common parlance for the goods or services in question: it must be available for others to use.

If the mark has come to be the common name in the trade for goods or services for which it is registered, through the acts or inactivity of the proprietor, this ground for revocation will be made out. Note that there must be an act or omission on the art of the proprietor, and that it is use by the trade not the public which matters. Compare this with section 3(1)(d) (supra., paragraph Error: Reference source not found), which is aimed at a closely-related issue but which uses rather different words. However, the same principles apply in that the matter is assessed through the eyes of the average consumer.15

Misleading marks

Misleading marks will also be liable to revocation, under section 46((1)(d). If the mark is liable to mislead the public especially about the nature, quality or geographical origin of the goods or services for which it is registered, and that situation has arisen through the use of the mark by the proprietor or with its consent, there are good policy reasons for refusing to allow it to remain registered. The Court of Justice tells us that, despite the use of the word ‘mislead’ rather than ‘deceive’, it is the same as section 3(3)(b) (supra., paragraph Error: Reference source not found).

Geographical names were prima facie unregistrable under the 1938 Act. The admittance to the register of such marks, achieved for the first time in the 1994 Act, makes this provision particularly significant: under the 1938 Act misleading geographical indications could be refused registration but there was no specific provision dealing with revocation of a mark on these grounds.

Applications for revocation

Application may be made by any person, not only one with an interest in the mark, to the registrar or to the court. If proceedings are already pending in court in a matter relating to the trade mark, the application must be to the court. The Registrar is given discretion to refer an application to the court of an application is made to him, and this may be done at any time.

Partial revocation

Revocation may be partial, relating to some only of the goods or services for which the mark is registered. Then, the mark remains registered for the goods or services for which its registration remains valid. In David West t/a Eastenders v Fuller Smith & Turner plc16 beer was too wide a description of the goods: only bitter had been sold, so partial revocation was appropriate. In such a situation, the views of consumers about how the mark has actually been used will be considered.17

In MINERVA18, Jacob J (following Laddie J’s decision in Mercury Communications v Mercury Interactive19 in preference to Neuberger J’s in Premier Brands UK Limited v. Typhoon Europe Ltd 20) amended the specification rather than simply deleting from it.

Effect of revocation

The rights of the person registered as the proprietor of a mark are considered to have ceased in so far as it is revoked, from

  • the date of the application for revocation, or

  • an earlier date if the court is satisfied that the grounds for revocation existed at that time.

Grounds for invalidity

The grounds on which a mark may be declared invalid are spelt out in section 47. It also explains how an application to have a mark declared invalid can be made and the effect of a declaration.

The 1994 Act does not include the provision found in the 1938 Act (section 32) that allowed anyone to apply for rectification on the grounds that the registration in whole or in part was wrongly made or wrongly remains on the register. Instead, it provides two specific grounds:

  • that the mark was registered in breach of section 3 or any provision referred to there, or

  • that the mark conflicts with an earlier trade mark or other right (section 5).

These provisions complete the implementation of Articles 3 and 4 of the Directive, which requires that marks ‘shall not be registered or, if registered, shall be liable to be declared invalid’ if there is a ground of objection.

The effect of a declaration of invalidity is that the mark is deemed never to have been registered. A defendant who successfully counterclaims and obtains a declaration of invalidity is exonerated from all past acts of infringement.

Absolute grounds

The first leg of this provision is concerned with absolute grounds for refusal of registration. This would include a mark subsequently found to consist of signs or indications which designate the intended purpose of the goods.

However, a trade mark will not necessarily be invalidly registered just because at the time of registration it was not distinctive. If it has acquired distinctiveness through use, it will be allowed to remain on the register. This implements Article 3(3) of the Directive, one of the optional provisions.

Any person may make an application: as with revocation, there is no requirement of locus standi.

Relative grounds

Normally, a conflicting earlier registration will be found at the examination stage, and a well-organised owner of prior rights will oppose it. If a mark slips through the net and is registered before a conflict comes to light, it may be removed from the register later.

A registered mark may also be declared invalid if it conflicts with an earlier right of another description within section 5(4). So if an earlier unregistered trade mark, giving the owner the right to enjoin the owner of the later, registered, right from passing off, exists the later registration may be invalidated.

In neither case may the registration be declared invalid if the owner of an earlier right (whether a registered trade mark or something else) has consented to the registration.

Under the Trade Marks (Relative Grounds) Order 200721, only the owner of the prior rights may apply for a declaration of invalidty on relative grounds. The Trade Marks (Proof of Use) Regulations22 require that the action be brought within five years of the date of registration of the junior mark. This provision saves trade mark owners who fail to take timely opposition proceedings, but they still have to make sure they comply with time limits.

The Application

An application for a declaration of invalidity may be made by any person. They do not have to be able to show any interest in the matter. It maybe made to the Registrar or to the Court.

If there are proceedings relating to the mark pending before the court already, the application must be to the court. The Registrar may refer proceedings to the court at anytime.

The Registrar may himself apply to the court for a declaration of invalidity if registration of the mark has been applied for in bad faith. He would need to have good grounds for believing that details in the original application were either wilfully misrepresented or intentionally incorrect. Section 32(2) of the 1938 Act made similar provision, though it was expressed in terms of fraud in the registration of a trade mark.

Where the grounds for invalidity exist only partially, that is the mark is invalidly registered for some but not all the goods or services within the specification, the registration may be declare invalid for those goods or services only. Then the mark remains validly registered for the rest of the specification.

Where a declaration of invalidity is made, the registration is deemed to that extent never to have been made. This does not however affect transactions past and closed. So if a proprietor has sued for infringement, and been awarded damages, and the time for an appeal has passed, the judgement will stand. Likewise, a person to whom the mark has been assigned cannot question the agreement for the transfer of the mark on the ground that the registration has since been invalidated.

Acquiescence

If a person acquiesces in the registration or use of another trade mark for five years, her right to challenge that registration or use is limited by section 48. This implements Article 9 of the Directive.

Section 13 of the 1938 Act made similar provision, and is superseded by the new section: but its approach was very different. Section 13 provided that a Part A mark would be considered valid in all respects after having been registered for seven years.

The effect of acquiescence applies equally to the owners of earlier trade marks or other prior rights. Acquiescence is something that happens knowingly. If it occurs, the proprietor of the senior rights is not entitled to claim that the junior mark is invalid, or challenge its use on the goods or services for which it is used.

There is an exception to this provision where the later mark was applied for in bad faith. However, what is bad faith, like the matter of when acquiescence is knowing or the extent to which the proprietor of the rights knew of the later use, is for decision on the facts of each individual case.

Where these fact arise, the proprietor of the junior registered mark is not allowed to oppose the use of the earlier right, or its exploitation. The proprietor of the senior right is prevented from attacking the junior mark but is protected from attack by it.

1See for example BON MATIN TM [1989] RPC 537, which is of course a decision made under the old law.

2In some industries, trade associations allow businesses to register their interest in using a particular name for a drug, say, or a new model of a car. This supplements the trade mark system, and makes no difference to the rules about revocation if a registered trade mark not be used.

3Case C-40/01, Ansul BV v Ajax Brandbeveiliging BV [2003] ECR I-2439.

4POLICE TM [2004] RPC 693.

6[2006] FSR 49.

7See MAGIC BALL TM [2000] RPC 439.

8Case C-246/05, Armin Häupl v Lidl Stiftung & Co AG [2007] ECR I-4673.

9[2000] FSR 767.

10Case C-xx/xx, Arsenal, Case C-xx/xx, Opel, and Case C-xx/xx, Céline.

11[2009] ECR I-00137.

12[2006] FSR 49. See above, para Error: Reference source not found.

13Appointed person (Anna Carboni), O/299/08.

14[1997] RPC 513.

16[2003] FSR 816.

17Thompson Holidays Ltd v Norwegian Cruise Lines Ltd [2003] RPC 586.

18Reed Consumer Books v Pomaco [2000] FSR 734.

19[1995] FSR 850.

20[2000] FSR 767 Neuberger J.

21SI 2007 No. 1976.

22SI 2004 No. 946.

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