While a registered trademark can enjoy all the benefits and statutory protection that an intellectual property entails, there are also instances when it can be removed from the register. This is called trademark revocation.
One of the common grounds for trademark revocation is the failure to use a registered trademark for five consecutive years. Remember that this rule is stated when you are applying for a trademark and that you are obliged to provide a document called statutory declaration of use and intent to use. In 2002, one company applied for the revocation of a Spanish company’s trademark on the grounds of non-use after the latter was given the trademark registration. The original proprietor was found to have failed to use the trademark since 1986 and the subsequent five years, which means they no longer own the rights and privileges of that trademark. As a result, the second company that filed an application was given the chance to apply for the trademark. When the mark was published, the first company filed an opposition with the grounds that the 1986 trademark was still in the Register when the second company applied for the trademark.
The result of the case was that the second company was not allowed to register because of the first to file rule. The trademark of the first company was recognized. What this case shows us is that the applicant must make sure any earlier trademark is revoked before filing for a registration, and that those who are given a registered trademark must use the trademark to enjoy its benefits and the protection of the law.
Other Grounds for Revocation
While non-use is the most common grounds for trademark revocation, there are also other reasons why the trademark protection may be withdrawn. These include suspension of the trademark for five uninterrupted years without valid reasons; the trademark is a common name due to the inactivity or actions of the proprietor; and the misleading manner in which the trademark has been used, especially its quality and origin.
A registered trademark may also be considered invalid for the following grounds: the current trademark is in conflict with an earlier trademark; the registration did not meet the basic requirements; it has been determined that there is fraud during the registration; or there is a misrepresentation during the trademark application.
If the proprietor wishes to alter any information in the registered trademark, such as address and name of the proprietor, this should be done with the proper documentation. Alterations will not be allowed. Moreover, the proprietor can also submit an application to cancel some goods and/or services listed under a registered trademark if he/she wishes to do so. Any changes in the information of a registered trademark should be recorded.