Registering an Abandoned Trade Mark in the UK

If you are a business in England, you must understand the trade mark registration process before seeking to register an abandoned trade mark. If you do not complete the correct procedures, the UK Intellectual Property Office (IPO) may reject your trade mark application. In this article, we will discuss the requirements and the process involved in registering an abandoned trade mark in the UK.  

Trade Mark Essentials

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What is an Abandoned Trade Mark?

Suppose you wish to resurrect an old business or a business with the same name. In this instance, the original owner of the trade mark may have abandoned the trade mark. To gain the exclusive rights to use the trade mark, you will need to put the trade mark to use.

This can be highly beneficial for some businesses. Indeed, you could benefit from a large customer base established under the old brand, regardless of its previous trade area. However, you should conduct strong research into the previous brand to establish whether the trade mark has been truly abandoned. 

Can a Trade Mark Be Revoked for Non-Use?

When a business makes a trade mark application, there is an expectation that the brand owners will use the mark and their legal protection to highlight their goods and services over ten years. However, the IPO may revoke trade mark registration if you do not use your trade mark for the first five years of its registration.

Anyone can apply to revoke a trade mark. Therefore, if you find a trade mark that has been inactive for five years, you can make an application from the day after the five-year registration date. 

What is the Process?

You must apply to the IPO with the correct forms to apply for a trade mark revocation. In addition, you must pay a £200 fee. This application form must include detail on the dates you believe the trade mark has been inactive. 

However, the trade mark owner can challenge your claims by demonstrating they have used the trade mark in some way over the past five years. If they can prove this, they will be able to maintain their registration and stop any revocation proceedings. Further, if the original trade mark owner cannot show genuine use of the trade mark five years before the revocation application, they can also show that they have valid reasons for the non-use of the mark. For example, export or legal reasons. 

Before beginning any legal proceedings, you should contact the registered trade mark owner and discuss the possibility of transferring or selling the mark.

The Relationship Between Trade Marks and Other Types of Intellectual Property

Copyright is a type of intellectual property that is automatic upon creating an original piece of work. Therefore, the original work could still be subject to copyright. So, it would help if you discussed this with the owner of the mark.

In addition, a trade mark that appears to be abandoned could still possess unregistered rights under the legal protection of ‘passing off’. Where the original brand has built up a strong reputation under the trade mark, the owner will likely still be able to protect and enforce their rights under unregistered trade marks if enough goodwill exists among the public concerning their brand and recognition of their trade mark. Therefore, you should be aware that unregistered rights are nevertheless a form of protection.

Expired Trade Marks 

You must renew trade marks every ten years. If you do not, you can generally register it again. Even the original owner will have to submit a new application. However, you will lose all exclusivity rights. So, any legal protection will no longer be applicable for the trade mark concerning the registered area of business. Therefore, if you are aware of an expired trade mark, you can apply to register it under your business without any legal repercussions.

Key Takeaways

Abandoned trade marks are registered trade marks that have been inactive for at least five years. To initiate the process of revocation, you must apply to the Intellectual Property Office and prove the trade mark owner did not use their trade mark in the previous five years.

However, the owner of the trade mark can defend their position and attempt to prove they have used the trade mark. Alternatively, they may have proper reasons for not using it, such as legal restrictions. If a trade mark has expired, however, you can apply to register the trade mark without involving the original owner. This is because the trade mark loses its exclusivity once the expiry date of 10 years has passed.

If you need help deciding whether to register a trade mark, our experienced intellectual property lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 0808 196 8584 or visit our membership page.

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