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Dormant Trade Marks – Use Them Or Lose Them!

Trade marks that are not put to good use merely clog up the register and have been likened to abandoned vessels in the shipping lanes of commerce. In one case on point, the Intellectual Property Office (IPO) stripped a classic car company of a valuable mark that it had not used for years.

The mark had been registered in the 1990s but, in applying to revoke it under Sections 46(1)(a) and (b) of the Trade Marks Act 1994, a businessman presented evidence that its proprietor was an apparently dormant company that had no current website or any assets. He argued that there was nothing to indicate that any use had been made of the mark in the UK since registration.

The proprietor argued that it had invested substantial sums in exploiting the mark and had made significant use of it in connection with its business for several years after it was registered. It had ceased trading in 2002, due to a falling off in its export market, but had current plans to restart its business and rejuvenate the mark.

In revoking the registration, however, the IPO noted that it was for the proprietor to prove that it had made genuine use of the mark. The evidence indicated a 14-year hiatus in such use and there were no advertisements, press releases or websites that revealed an intention to relaunch the brand.

The IPO observed that sitting on trade marks, without making any genuine use of them, for many years is contrary to public policy. If marks which their owners are not using because of unfavourable economic conditions were allowed to remain on the register indefinitely, UK and international trade would grind to a halt. Such dormant marks also posed an unwarranted hazard or obstacle to those who actually intend to trade using the same or similar marks. The proprietor was also ordered to pay the businessman’s £1,200 legal costs.