In Short
- An abandoned trade mark is usually one that has not been used for at least five consecutive years.
- You can apply to revoke it through the UK Intellectual Property Office, but the owner may defend the claim.
- Even if a mark looks abandoned or expired, unregistered rights or Crown ownership may still apply.
Tips for Businesses
Before applying to register an abandoned trade mark, research its history carefully. Check whether it has truly been unused, whether the owner still has unregistered rights, or whether the mark is owned by the Crown. Consider speaking to the existing owner first and get legal advice to avoid opposition or wasted costs.
Table of Contents
If you are a business in the UK, you must understand the trade mark registration process before seeking to register an abandoned trade mark. If you do not complete the correct procedures, your application may not be able to achieve registration. In this article, we will discuss the requirements and the process involved in registering an abandoned trade mark in the UK.
LegalVision’s Trade Mark Essentials Guide provides valuable information for any business looking to register or enforce a trade mark.
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 likely need to file a trade mark application for the mark.
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. This strategy is certainly not risk-free, though. If the original owner has not abandoned the trade mark, they may oppose your trade mark application.
Can a Trade Mark Be Revoked for Non-Use?
When a business applies for a trade mark, owners must use it for the ten-year registration period. The IPO may revoke registration if you do not use the mark for five consecutive years.
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 details 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 initiating any legal proceedings, you could also contact the registered trade mark owner and discuss the possibility of them transferring or selling the mark.
Registered Trade Marks in the Name of Dissolved Companies
If a company dissolves without transferring its registered trade mark, the trade mark automatically becomes Crown property. This is because the trade mark will be considered ‘bona vacantia’, or ‘ownerless goods’.
In this situation, if the abandoned mark is in the name of a now dissolved company, unless there was a legal agreement in place before the dissolution which has not yet been updated on the register, then you have two options to obtain registered rights within the mark. Option one is to simply file a new trade mark application for the same mark. Technically, the Crown, as the owner of an earlier registered mark, can oppose your application. Option two is to purchase the registration from the Crown. This option currently attracts minimum fees of £1,000+VAT plus the costs of the Government’s Bona Vacantia division in making the sale. The Crown may sell the registration for market value, and so the costs could be significantly higher.
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 registered 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 may be able to 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. Take caution with this approach, though, as this is not a guarantee that the original owner has no rights in the mark at all.
If the abandoned mark has transferred into the ownership of the Crown, you also have the option to purchase the registration, although this carries higher fees than simply refiling the mark.
If you need help deciding whether to register a trade mark, LegalVision provides ongoing legal support for businesses through our fixed-fee legal membership. Our experienced lawyers help businesses across industries manage contracts, employment law, disputes, intellectual property, and more, with unlimited access to specialist lawyers for a fixed monthly fee. To learn more about LegalVision’s legal membership, call 0808 196 8584 or visit our membership page.
Frequently Asked Questions
An abandoned trade mark has not been used for at least five years. Once this period has passed, it is vulnerable to revocation proceedings which anyone can apply for.
You must apply with a £200 fee. However, if you seek legal assistance with the application, you will also be subject to legal fees.
We appreciate your feedback – your submission has been successfully received.
