Revocation of trade marks for non-use
A UK trade mark registration can last indefinitely, but only while the mark is being used. If the owner hasn't used it for five years, anyone can apply to have it removed from the register. This is called revocation for non-use. It is one of the most useful tools available to businesses that find an old, unused registration blocking their own brand.
This guide covers how revocation works, what the owner has to prove, and what to think about before you apply.
When can a trade mark be revoked for non-use?
Under section 46(1) of the Trade Marks Act 1994, a registration can be revoked if:
• it has not been put to genuine use in the UK for the goods or services it covers, by the owner or with their consent, within the five years after its registration process was completed, or
• use has been suspended for an uninterrupted period of five years at any point after that.
The owner can defend the registration by showing proper reasons for non-use. These are narrow. They generally mean obstacles outside the owner's control that are directly connected to the mark, such as waiting for regulatory approval to sell a medicinal product. Ordinary commercial difficulties, like a lack of funding or a delayed product launch, will rarely be enough.
Any person may apply. You don't need to show a commercial interest, and you don't need to reveal who you are acting for. Many applications are filed through an adviser for that reason.
What counts as “genuine use”?
Genuine use means real commercial use of the mark to create or keep a market for the goods or services. It does not mean token use made only to keep the registration alive. The courts consider all the circumstances, including:
• the nature of the goods or services and the market for them
• the scale and frequency of use
• whether the use was public and outward-facing, not just internal
• whether the use was aimed at customers in the UK
Use does not have to be large. Modest but real sales can be enough, particularly in a niche market.
Who has to prove what?
The burden sits with the owner. Under section 100 of the Act, if a dispute arises about use, the owner must prove it. In practice, the applicant only has to identify the relevant five-year period and the goods or services it says have not been used. The owner must then produce evidence, such as invoices, sales figures, marketing materials, website archives and dated photographs of products.
Partial revocation
Revocation does not have to cover the whole registration. If the mark has been used for some goods or services but not others, the registration can be cut back to what has actually been used (s.46(5)).
This matters because many registrations have broad specifications. If a mark is registered for “clothing” but has only been used on T-shirts, the owner may keep a specification limited to what the tribunal considers a fair description of that use.
Timing and the three-month rule
Owners who hear that a challenge is coming sometimes rush to start using the mark. The Act deals with this. Use that begins or resumes after the five-year period has expired is disregarded if it:
• began within the three months before the revocation application was filed, and
• the preparations for it began only after the owner became aware that an application might be made (s.46(3)).
This affects tactics. If you contact the owner first, for example to ask whether they will surrender or sell the mark, you should generally be ready to file within three months. Otherwise, any new use they begin may count.
The effective date
A successful revocation takes effect from the date of the application. The applicant can ask for an earlier date if the grounds already existed then (s.46(6)). An earlier date can be important where the registration is being relied on against you in an opposition or infringement claim.
The procedure at the UKIPO
1. Application. The applicant files Form TM26(N) with the official fee, specifying the relevant five-year period or periods.
2. Owner's response. The owner has two months to file a defence on Form TM8(N) along with evidence of use. If they file nothing, the registration will usually be revoked without further argument.
3. Evidence rounds. If the owner defends, both sides file evidence in turn.
4. Decision. The matter is decided by a Hearing Officer, either at a hearing or on the papers.
Costs at the UKIPO are awarded on a published scale and are usually modest compared with court proceedings. Revocation can also be sought in the courts, typically as a counterclaim in infringement proceedings.
Practical tips
If you want to revoke an unused mark
• Check the registration date. The five-year window only opens 5 years after the registration date.
• Carry out a use investigation before you file. This might include web and marketplace searches, Companies House checks and, in some cases, a commercial investigator.
• Consider whether partial revocation would be enough.
• Plan how you will approach the owner with the three-month rule in mind.
If you own a registration
• Keep dated records of use for every key product or service line.
• Review your specifications periodically and consider refiling for marks you intend to use in new areas.
• Don't assume a broad registration protects everything it lists. Unused parts are vulnerable.
How we can help
InHouse IP advises on both sides of non-use disputes. We investigate and challenge unused registrations, and we help owners gather and present evidence to defend their marks. If an old registration is standing in your way, or you have received a revocation application, please get in touch.