Can you register a dead trade mark?

Trade marks are intangible assets such as logos, words, sounds, colours and designs that can play an invaluable role in helping a company to build a powerful brand.

Many businesses invest considerable resources in the creation of a trade mark on the basis that, should it be successful, their investment will bring great rewards in the future.

For this reason, trade marks are generally provided with legal protection around the world – in the UK this comes in the form of the Trade Marks Act 1994.

Should the owner of a trade mark not make use of it within a certain time frame, however, another party may be able to have the registration revoked.

This article will examine whether such a move is advisable.

Can I register a dead or expired trade mark?

As trade mark law can vary between jurisdictions, it is vital to gain expert advice on the regulations that apply to the country in which you want the mark to apply.

Can I use a dead trade mark UK?

Under UK law it is possible for an organisation to apply for an existing trade mark to be revoked – in effect to be declared dead.

It is possible for the trade mark to be revoked in its entirety or some of the goods and services it is protected for.

The owners of the trade mark will have the right to oppose the application – should no agreement be reached, the case will go to a tribunal.

An application to revoke or cancel a trade mark can be made for the following reasons:

Non-use of the trade mark

It is possible to claim that a trade mark has not been used by the company that registered it after five years from the date of registration, or for an uninterrupted period of five years during the time in which the legal protection has been in place.

The company could also be at risk of losing the trade mark if it has used it in relation to only some of the goods and services for which it was registered.

The owner of the trade mark could oppose the application by demonstrating that it has used the trade mark within the relevant jurisdiction and for the appropriate goods or services.

Alternatively, it could claim it was prevented from using the trade mark due to extreme circumstances; this could be either on a personal level (e.g. illness) or on a wider scale (e.g. natural disaster or war). It is important to be aware that it is rare for a company to mount a successful defence in this way.

‘Generic’ trade marks

Language is constantly changing and it is possible that over the years a brand becomes so well known that the trade mark term you use to describe your product becomes the accepted name for all goods or services of that type, including those provided by your rivals.

In such instances another organisation may argue that it is not appropriate for the trade mark to remain in force.

Misleading trade marks

You may also be able to apply to have a trade mark revoked if you believe it provides a misleading description of the goods or services to which it relates – for example, in terms of a product’s quality or country of origin.

Can I register a dead trade mark without going to a tribunal?

Anyone can apply to register a trade mark and the UK Registry cannot refuse an application on the basis of an earlier trade mark. They will however notify the owners of identical and similar trade marks of similar/identical later applications and this allows the owners of the earlier marks to object to the use and registration of later applications. Where objections are raised it is highly advisable to attempt to reach an amicable agreement with the owner of a trade mark before commencing formal legal proceedings.

Settling the matter directly with the owner is likely to be quicker and cheaper than going to a tribunal – especially as its decision may be subject to an appeal and costs will be awarded to the successful party.

Trademark Eagle will be delighted to advise you of your position and whether to file an application or not. Approaching owners of earlier trade marks is often inadvisable because it alerts them to your interest in the marks and this can result in objections to your use and any application to protect the trade mark and also their bringing the trade mark into use to avoid a cancellation action.

Can you use a dead trade mark if it has not been renewed?

Under UK law, a trade mark must be renewed every 10 years.

It may be possible for the original owner to restore the mark for up to a year after the renewal date but after this it will be considered to have expired. However, this does not mean the mark is still not being used and stringent checks and research are strongly advised where you are considering using a trade mark that seems not to be protected.

Once again, Trademark Eagle can use its expertise to negotiate on your behalf – and support you in any subsequent legal proceedings should they become necessary.

What things should I consider before trying to register a dead trade mark?

We have seen that in certain circumstances it may be possible to register a dead trade mark but that you need to be sure of your position before adopting such a trade mark.

It could be argued, however, that rather than asking ‘Can I use a dead trade mark?’, a more pertinent question is ‘Should I register a dead trade mark?’

There are positives and negatives to this course of action On the plus side, taking over a previously established trade mark will avoid the cost of actually creating your own from scratch. In addition, rather than having to build up a new brand, you can use one which is likely to already have some recognition among potential customers. On the down side, there may be residual rights in a trade mark that is no longer registered or it may still be in use. Some brands have a negative reputation, and this can impact on anyone trying to use or resurrect such a brand.

As we have seen, such a course of action may bring costs of its own – particular if formal legal proceedings result.

In addition, the fact that the original owner of the trade mark allowed it to fall into disuse may pose questions over its value and effectiveness in the marketplace. It is generally better to use your time and money to create and register your own distinctive trade mark.

The issue of taking over dead trade marks is a complex one but Trademark Eagle’s team of attorneys can ensure that you understand all the options available so that you can make the right decisions for your company.

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