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.