In the UK, like in many other overseas jurisdictions, registered trade marks provide very strong protection as they can be renewed for consecutive 10 year periods, potentially indefinitely. Where, for example, the mark is a logo, a registered trade mark could potentially provide longer and broader protection than would be provided under equivalent copyright laws.

However, registered trade marks do not provide complete monopolies as they can still be removed from the register during their lifetimes for a number of different reasons. One of these reasons, from a UK-perspective, is that the mark is not being used.

What is meant by non-use?

In the UK, a registered trade mark can be revoked upon application by any party, if the trade mark has not been put to genuine use during a continuous period of five years following registration and there are no proper reasons for that non-use.

When seeking to protect your various brands by filing trade marks, it is always important to make sure that they provide the right scope of protection for your commercial needs.

Trade marks can only be registered in respect of specific goods and services which an applicant sets out in a list (a.k.a. the “specification”). It is not possible to expand the specification from the point of filing, so goods and services cannot be added later on during the lifetime of the registration. In those circumstances a new application would need to be filed, which would come with all the associated costs.

It will therefore be necessary at the filing stage not only to ensure that the mark will be protected for all goods and services it is being used for at that time, but also for goods and services that will be offered under the mark in the next five years.

The scope of trade mark protection is a hot topic in the IP world at the moment, with the courts having to answer questions around the legitimacy of filing overly broad specifications as well as ‘evergreening’ (i.e. filing new applications every five years to seek to avoid challenge on non-use grounds). The Supreme Court will soon be hearing an appeal from a decision of the Court of Appeal concerning applications for broad specifications and whether they may be wholly or partially invalid on grounds of bad faith (SkyKick UK Ltd and another (Appellants) v Sky Ltd and others (Respondents) Neutral Citation Number [2021] EWCA Civ 1121).

There can sometimes be a tendency to cast the net too wide and seek protection in respect of goods and services that will never be sold under the mark, or even with the best intentions a business just may not get around to using the mark for the whole of its specification.

The five year challenge

Once a mark has not been used in the UK for a consecutive period of five years after registration, it becomes susceptible to challenge and potentially revocation on the grounds of non-use, either in whole or in respect of part of its specification. It may be on the register, but it is effectively a ‘sitting duck’.

This may become an issue when the owner seeks to enforce the registration against a third party, or if a third party is seeking to clear a path to enter a similar or identical product on the same market under its own similar or identical brand.

In practical terms, a non-use challenge can be an expensive exercise for a brand owner as if it decides to defend the challenge, it will need to provide evidence that it has used the mark potentially against the entire specification of goods and services. This process can be expensive, can result in the whole or partial revocation of a mark and will be less than ideal from a practical perspective, for example when a brand owner is seeking to retain the upper hand as a claimant in infringement proceedings.

The UK’s departure from the EU has caused many brand owners to have to reassess their protection across both territories, since use in the UK will no longer support an EU registered trade mark and vice versa.

Another important consideration on the question of (non-)use is that a trade mark registration can accidentally become susceptible to revocation for non-use, if it is not used in the same form as it appears on the register.

Often brands and trade marks are tweaked and developed by marketing departments in order to stay relevant and in the forefront of the minds of the relevant consumers. For example by changing colour schemes, stylisation, logos and using the mark in a composite form with other marks. If trade mark portfolios are not updated on a regular basis to take these changes into account, this can often result in a mark being used that is not the same as the registered mark, leaving the registered mark susceptible to revocation for non-use.

It is possible for genuine use of a trade mark to be established (and therefore protected from a non-use challenge) by use “in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered…”.

Yet in practical terms this is a legal debate that a claimant seeking to enforce a registered trade mark would prefer not to have to deal with when pursuing an infringer.

What should businesses do?

To protect your business against the above brand risks, we suggest regular audits of your brand and IP portfolios. Regular brand audits can help identify where registrations may be susceptible to non-use challenges, and help you close any gaps in your portfolios.

Intellectual Property

Contact: Kerry Russell   kerry.russell@shma.co.uk