#1692 - Trademarks Invalidity And Revocation - Intellectual Property Law

Invalidity and Revocation

S.70: TM register not guarantee of validity of TMs. Proceedings never initiated by OHIM, only app. for cancellation.

There are two reasons why a mark might be removed from the register:

1. Invalid on the basis that it was registered in breach of one of the absolute/relative grounds (s.47).

2. Revocation (s.46). Four grounds for revocation:

   • Non-use: TM has not been used for 5 years following date of completion of registration.

   • Use of TM has been suspended for an uninterrupted period of 5 years.

   • Generic: TM has become the ‘common name in the trade’.

   • Deceptive: TM used in such a way that it is liable to mislead the public.

S.72: Onus of proving the mark should be revoked falls upon the party seeking revocation of the mark.

s.100: Modifies position for revocation for non-use. Proprietor must show use has been made of the registered mark.

• Non-use – Protection for marks is only justified by their use. Ensures other traders can safely use similar, as well as identical, marks. Also ensures that opportunistic stockpiling if good marks is fruitless.

Test: If a mark has not been put to genuine use within a continuous period of five years between registration and the filing of the request for cancellation, then it will be revoked unless there are proper reasons for non-use. Burden of providing evidence of genuine use, or demonstrating that there are proper reasons for non-use, rests on the proprietor.

+ Jacob J: Referred to these signs as ‘abandoned vessels in the shipping lane of trade’.

What is the genuine use of the mark?

• *Ansul BV [2003]; Indicated what is required to show genuine use is: ‘Use of the mark on the market for the goods or services protected by that mark and not just internal use by the undertaking concerned…Use of the mark must therefore relate to goods or services already marketed or about to be marketed and for which preparations by the undertaking to secure customers are under way, particularly in the form of advertising campaigns’. ‘Token use’ for sole purpose of preserving the right will not suffice.

• *La Mer Technologiy [2004];Use relied upon by the proprietor was very small indeed. Ct said where the use serves a real commercial purpose, even minimal use of the mark, or use by only a single importer in the MS concerned, can be sufficient to establish genuine use within meaning of the Directive. This ruling effectively put paid to any possibility of applying a “de minimis” rule. Thus the crucial factor is the quality of the use.

• Silberquelle [2009]; WELLNESS held by S for clothing and non-alcoholic drinks. Giving away 800 bottles of a soft drink labelled WELLNESS-DRINK with purchases of their clothes did not amount to genuine use of the mark for non-alcoholic drinks. Use needs to indicate trade origin.

The fact that goods or services are offered on a non-profit-making basis is not decisive.

• Verein Radetzky-Orden v. Bundesvereinigung Kameradschaft ‘Feldmarschall Radetzky’ (2008); A charitable association may intend to create an outlet for its goods or services, and there are charitably-funded welfare services. As long as the association uses its marks to identify and promote the goods or services for which they were registered, it is making an actual use of them which constitutes ‘genuine use’.

Proper reasons for non-use: Circumstances unconnected with the TMO which prohibit use of the mark, rather than commercial difficulties.

• Häupl [2007]; ‘obstacles having a direct relationship with a trade mark which make its use impossible or unreasonable and which are independent of the will of the proprietor of that mark constitute “proper reasons for non-use” of the mark’ (cp TRIPs Art. 19(1)).

• Generic Marks

Test: S.46(1)(c): Mark may be revoked if it has become a generic term: ‘if in consequence of acts or inactivity of the proprietor the TM it has become the common name in trade for a product or service for which the mark was registered’. Has come to designate a genus or type of product rather than a particular product from a particular source.

Examples of marks which have become common: GRAMOHONE, LINOLEUM, SHREDDED WHEAT.

• Björnekulla v. Procordia [2004]; ECJ held that in most cases the assessment was to be undertaken from the point of view of consumers. Concerned BOSTONGURKA registered in Sweden for pickled gherkins. Evidence before Swedish ct showed consumers saw sign as descriptive of goods, but traders appreciated it indicated gherkins from a particular manufacturer, Procordia. Ct stated both Arts 3 and 12 of the Directive reflected need for the mark to perform the function of indicating origin. Held matter should normally be interpreted from consumers’ or end users’ point of view rather than those in the trade. However, the opposite may be true for prescription pharmaceuticals where the choice of medical professionals was relevant.

Fault: Mark will only be revoked if it has become generic as a ‘consequence of the acts or inactivity’ of the proprietor. ECJ has referred to this as the ‘requirement of vigilant conduct’ (Levi Strauss). Must abstain from using mark in a way that it becomes generic and take action to ensure others do not jeopardise mark’s distinctiveness, e.g. by bringing enforcement proceedings.

+ Pendleton: Argues revocation is generic marks not justifiable. Says the rule is ‘an open invitation to commercial...