Understanding Trademark Revocation Law: Recent Developments By Trademark Invalidity Lawyers
How Trademark Dispute Lawyers Handle Invalidity Claims
Understanding Invalidity Claims
Trademark Dispute Lawyers: Navigating Invalidity Proceedings
This case is important for clients looking for lawyers who can help with trademark invalidity and trademark disputes. It is also relevant for those needing lawyers to help with registering their brands.
Trademark dispute lawyers know all too well that protecting a mark is not easy. Not even the Easy mark is always easy to protect.
The U.K. Intellectual Property Office ruled that EasyGroup could not continue using "easyGuide" as part of its trademark family. The evidence provided did not demonstrate actual use in the areas where the trademark was registered.
This case is especially relevant for clients looking for trademark invalidity lawyers and trademark dispute lawyers, as well as for those seeking trademark lawyers to register brands initially.
If you are seeking specific help regarding invalidity, you can either skip the takeaways or read the whole article, which is full of elucidating information on UK trademark law.
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The invalidity hearing in question is:
easyGroup: Case BL O/0126/25 Decision date: 12 February 2025 Hearing Officer: Mrs. Suzanne Hitchings Mark: easyGuide Classes: 16, 39, 42
Background on UK Trademark Law
The UK procedure for revocation and invalidity is governed by the Trade Marks Act 1994 (the Act)and the Trade Marks Rules 2008, SI 2008/1797 (the Rules), along with case law, including EU case law, regarding comparable UK Trade Marks, which we will explain more about later. The Rules and the Act have been amended seven times since their inception. The Rules outline the procedural and administrative requirements for Trade Marks and Trade Mark applications. The Act provides the legal framework that governs registered trademarks in the UK.
The Act, the Rules and case law provide guidance on the circumstances in which a trademark can be declared invalid and the procedures for third parties to apply to have the marks revoked from the register on various grounds set out under s46(1) of the Act which are:
Under the Act and Rules-
A trademark can be revoked if:
It hasn't been genuinely used in the UK within five years of registration.
Its use has stopped for five years without good reason.
It has become a common name for the product or service.
Its use confuses people about the nature or quality of the goods or services.
In the case of "easyGuide," the applicant claimed that EasyGroup hadn't used the trademark for five years. EasyGroup argued that they had used it for all their goods and services.
Incidentally, the mark was a comparable mark as it was registered prior to Brexit. EU trademarks registered while the UK was a member are still valid after Brexit under the Withdrawal Agreement's Article 54. EGL’s EU mark was converted into a UK trademark recorded in the UK trademark register.
Both parties submitted their arguments in writing instead of having a formal hearing. EasyGroup requested confidentiality for sensitive information – under Rule 59(1) of the Trade Mark Rules 2008, which the Tribunal granted.
Clarification on Trademark Use in Legal Proceedings
Section 100 of the Trade Marks Act states that if there is a dispute in civil proceedings regarding how a registered trademark has been used, the trademark owner must demonstrate its use. This means that the owner must provide clear and convincing evidence to show that the trademark has been actively utilised in the market, which is crucial for maintaining its registration and protecting its rights.
Genuine Use
In considering whether the mark was put to genuine use during the five-year period prior to the date of filing the application for revocation, the tribunal referenced easyGroup Ltd v Nuclei Ltd & Ors 2023 EWCA Civ 1247. Arnold LJ outlined important principles regarding what constitutes "genuine use" of a trademark, which are crucial for any trademark dispute lawyer or trademark invalidity solicitor to understand:
Actual Use Required: Genuine use refers to the real, practical use of a trademark, either by the trademark owner or by someone authorised to use it (as established in Ansul). A trademark dispute lawyer must ensure that their client can demonstrate this actual use.
Beyond Token Use: The use must be substantial, not merely symbolic or to maintain trademark rights without real market activity (reference: La Mer; Sunrider; Verein; Leno; Centrotherm; Reber).. A trademark invalidity solicitor should be prepared to challenge any claims of token use.
Maintaining Origin Identity: The trademark must serve its fundamental role—helping consumers identify the origin of goods or services. This distinguishes it from competing products (cited cases: Silberquelle; Ferrari). This principle is vital for trademark dispute lawyers when arguing for or against trademark validity.
Market Participation: The use must be linked to goods or services actively offered or being prepared for the market. Internal use within a company is insufficient, and merely distributing promotional items related to other purchases does not count as genuine use. However, a nonprofit organization’s use can qualify, which is a point trademark invalidity solicitors should consider.
Commercial Exploitation: Genuine use involves real commercial activity that aims to create or sustain a market for the products or services associated with the trademark. This is a key argument for trademark dispute lawyers in defending their clients' trademarks.
Overall Circumstances Matter: When assessing genuine use, all relevant facts should be considered, including the economic necessity of the use in the sector, the nature of the goods/services, market characteristics, how often and extensively the mark is used, and what evidence the trademark owner can provide. A trademark invalidity solicitor must gather comprehensive evidence to support their case.
Minimal Use Can Be Genuine: Even small-scale or minimal use might qualify as genuine if justified within the specific economic context. For instance, if a single client imports goods for a legitimate commercial reason, this can demonstrate genuine use, which is a critical point
Not All Use is Genuine: Just because there is some commercial use of a trademark does not automatically mean it is genuine (as stated in Reber).
Burden of Proof: The trademark owner must provide clear evidence of genuine use. This evidence must be solid and objective, especially when the volume of commercial activity is low. The General Court has emphasised that speculation is insufficient; clear proof must be available (case law: Lidl Stiftung; Awareness Ltd v Plymouth City Council).
Key Points on Genuine Use
In summary, the owner must provide clear evidence that includes:
Real Use: The trademark must be actively used in the market, not just in theory.
Substantial Activity: The use should be significant and not just a token effort to keep the trademark alive.
Consumer Recognition: The trademark should help customers identify where the goods or services come from.
Market Connection: The use must be related to goods or services that are currently available or being prepared for sale.
Commercial Efforts: There should be real business activities aimed at maintaining a market presence for the trademark.
In a sentence, to establish that a trademark has been genuinely used, the trademark owner must present detailed evidence reflecting consistent market activity that aligns with the trademark’s primary function.
Decision Summary: Insights for Trademark Invalidity Lawyers and Trademark Dispute Lawyers
In the assessment regarding the genuine use of the "easyGuide" trademark, the tribunal found that the evidence presented did not show sufficient relevant use aligned with the registered specifications for the mark. Key points highlighted include:
Insufficient Evidence of Use: The "easyGuide" brand primarily engaged in services related to "activities and experiences," which did not meet the broader classifications under which the trademark was registered. Genuine use requires substantial commercial exploitation to maintain market presence over five years.
Global Assessment Considerations: Determining genuine use involves evaluating multiple factors, such as the frequency and scale of use, the nature of the marketed goods, and the brand's geographical reach. Accumulated evidence may demonstrate use, even if individual pieces do not.
Minimum Use Requirement: The tribunal emphasised that minimal use can qualify as genuine, provided it is adequate to maintain or create market share in the relevant sector.
Emphasis on Presenting Strong Evidence Early: The assessment highlights the importance of presenting a strong case upfront. Failure to do so risks the revocation of a trademark, regardless of its actual use.
Nature of Services: While there was some use of the trademark for online booking services, it did not extend to other services under the registered classes (such as ticket booking for travel or downloadable applications). The judge noted that merely booking services offered through a website did not fulfil the criteria for genuine use in those broader categories.
Conclusion: The tribunal concluded that the evidence did not support the genuine use of the "easyGuide" trademark for the contested services, resulting in the revocation of its registration. This decision serves as a critical reference for trademark invalidity lawyers and trademark dispute lawyers in understanding the importance of substantial evidence in trademark use cases.
Other Cases Referenced
Case C-689/15 W.F. Gözze Frottierweberei GmbH v Verein Bremer Baumwollbörse [EU:C:2017:434]
New Yorker SHK Jeans GmbH & Co. KG v OHIM, Case T- 415/09
Euro Gida Sanayi Ve Ticaret Limited v Gima (UK) Limited, BL O/345/10
YouView TV Ltd v Total Ltd [2012] EWHC 3158 (Ch)
SkyKick UK Ltd & Anor v Sky Ltd & Ors (Rev1) [2024] UKSC 36
Dosenbach-Ochsner Ag Schuhe Und Sport v Continental Shelf 128 Ltd, Case BL O/404/13
Nine Hot Tips for Trademark Dispute and Opposition Lawyers Regarding This Case
Leverage Comparable Trademarks: If your client has a trademark registered before Brexit, emphasise its status as a comparable trademark. EU case decisions prior to the UK's withdrawal remain pertinent in UK trademark disputes involving comparable trademarks.
Understand IP Completion Day: Be aware that comparable trademarks can be relied upon in the EU until 31 December 2020, known as IP Completion Day, which may impact your strategy in opposition cases.
Demonstrate Genuine Use Across Classes: Ensure that genuine use is evidenced for each class under which the trademark is registered. This is crucial for both defending against revocation and in opposition proceedings.
Compile Strong Evidence: Aim to gather robust and credible evidence that clearly demonstrates genuine use across all claimed services. This will strengthen your position in disputes and oppositions.
Present a Strong Case Early: Emphasise the importance of presenting a compelling case from the outset to avoid procedural pitfalls that could jeopardise your client's trademark rights.
Align Evidence with Registered Classes: Ensure that the evidence submitted illustrates real commercial activity and aligns with the registered classes of goods and services to counter claims of non-use effectively.
Minimal Use Can Be Valid: Educate clients that minimal use may still qualify as genuine if it can be demonstrated to maintain a market presence, which can be a critical defence in opposition cases.
Showcase Nature and Scale of Use: Be prepared to provide detailed information on the nature, scale, and geographical extent of the trademark's use to effectively defend against revocation claims.
Stay Informed on Relevant Case Law: Keep abreast of recent decisions and case law that may influence trademark disputes and oppositions, as these can provide valuable insights and precedents for your cases.
Written By Peter Adediran
21/02/2025
Useful Link
Understanding Trademark Disputes - A Basic Guide
Intellectual Property Disputes Service
Trademark Opposition - A Basic Guide
Trademark Registration - Useful Tips
To obtain a quotation, please contact us at (020) 7305-7491 or at peter@pailsolicitors.co.uk. We would be delighted to assist you. The writer is the owner and principal solicitor at PAIL® Solicitors. Subscribe to our newsletter to get blog post updates and other information about the firm straight to your inbox.