Out of Court
A contentious process where an application for the registration of a Trade Mark application can be opposed by a third party, e.g. the holder of an earlier conflicting right.
In some cases, an opposition may lead to an oral hearing. This is particularly common in Ireland and the United Kingdom.
Revocation is a process where a Trade Mark registration can be revoked (removed from the relevant register) upon application from a third party.
The typical grounds for revocation are:-
The Trade Mark has not been genuinely used for a continuous period of five years.
The Trade Mark has not been put to genuine use within five years of registration.
The Trade Mark has become generic through the action or lack of action from the Trade Mark owner.
The use of the Trade Mark has rendered it misleading and deceptive.
If a Trade Mark is challenged on the grounds of non use, the burden is on the proprietor to prove that the Trade Mark has been genuinely used.
To avoid revocation on the grounds of non use, a Trade Mark should be used in the form in which it was registered.
Invalidity is a process where the validity of a Trade Mark registration is called into question upon application from a third party.
The typical grounds for revocation are:
The Trade Mark was registered in breach of the conditions of registration, e.g. not distinctive, descriptive, and deceptive.
The Trade Mark conflicts with an earlier right.
The Trade Mark was registered in bad faith.
In the United Kingdom and Ireland an application for invalidity can either be determined before a court or out of court. If the Trade Mark is the subject of proceedings before court, only a court can hear and determine the application for invalidity. Whether the process is court or out of court will vary in other countries depending on the countries’ laws and regulations.
Before a Court
A Trade Mark registration gives its holder the exclusive right to use the Trade Mark in relation to the goods and/or services for which it is registered in the territory where the Trade Mark is registered.
It is not possible for the owner of an unregistered Trade Mark to bring infringement proceedings.
A Trade Mark registration allows its holder to prevent the unauthorised use of:-
An identical sign in relation to identical goods.
An identical sign in relation to similar goods/services where use would give rise to a likelihood of confusion (including a likelihood of association).
A similar sign in relation to identical and/or similar goods/services where use would give rise to a likelihood of confusion (including a likelihood of association).
An identical and/or similar sign in relation to similar and/or dissimilar goods/services where use would, without due cause, take unfair advantage of, or be detrimental to, the distinctive character or reputation of the Trade Mark.
The above grounds of infringement are similar to those that form the basis of an opposition to the registration of a Trade Mark
A European Union Trade Mark registration is enforceable throughout the European Union. In some cases, it may be possible for a court in one Member State to grant an order prohibiting use of the offending sign in other Member States.
In Ireland and the United Kingdom, the holders of both registered and unregistered signs can seek protection under the Common law tort of Passing off. Passing off can be relied on if:
A misrepresentation has been made in course of trade by another person to customers or prospective customers of the aggrieved party.
The misrepresentation is calculated to injure the goodwill/reputation that has been built up under the aggrieved party’s name in respect of the goods/services supplied by him.
The misrepresentation is such that it has damaged, or is likely to damage, the goodwill/reputation that the aggrieved party enjoys under his name.