FILING AND DEFENDING INVALIDATION ACTIONS

Limiting or removing a registered trademark from the UK Trade Mark Register is known as “invalidation”. You can apply to invalidate a competitor’s trade mark.

UNDER WHAT GROUNDS CAN YOU FILE FOR INVALIDATION ACTION?

Grounds for filing an invalidation action include:

  • Absolute grounds
  • Relative grounds

Absolute grounds concern the inherent registrability of the trademark. For example, if the trademark describes the goods or services that it is associated with, if it is known as a generic term within the relevant commercial field, if it is insufficiently distinctive or registration was applied for in bad faith.

Relative grounds concern conflict between existing trademarks (which do not have to be registered) and the trademark as registered.

HOW DO YOU FILE FOR INVALIDATION ACTION?

To file an invalidation application against a trademark in the UK you must submit the relevant form to the Intellectual Property Office (IPO), stating the grounds of invalidation relied and pay the official fee.

Prior to filing an invalidation application, you should seek to settle the issue with the owner of the trademark. Taking this step might settle the dispute amicable and reduce your costs.

…USE OUR EXPERIENCE TO HELP YOU

The trade mark attorneys at Albright IP can advise you on the best course of action should you wish to make an invalidation application. Simply fill out the contact form on the left hand side of this page. Alternatively, give us a call.

DEFENDING AGAINST INVALIDATION ACTION

If an invalidation application is filed against your trademark the registry will notify and send the documents to you. You will then have a period to file a counterstatement defending your trademark against the invalidation claims. Alternatively, if you agree with the invalidation you can chose to partially or fully surrender your trademark. After a counterstatement has been filed, the UK IPO will then set a deadline for filing further evidence and/or written statements. After this, the parties will be asked to decide whether they wish for a decision to be made on the papers or request a hearing. The Hearing Officer will then make a formal written decision. This decision can be appealed to the High Court or the Appointed Person.

You may be able to amicably resolve an invalidation action by coming to a coexistence agreement. This is a legal agreement between two parties to use the same or a similar trademark in the same or a similar market place under agreed conditions relating to distribution, promotion and retail channels. The agreement allows the two parties to use their trademarks within the terms agreed in the coexistence agreement without the fear of legal action or infringement. This can help prevent the two parties from enduring potentially lengthy and costly legal disputes.

WHY NOT CONTACT ALBRIGHT IP AND LET US HELP YOU?

The trademark attorneys at Albright IP can advise you on the best and most cost effective strategy to take when filing or defending an invalidation action. Simply fill out the contact form on the left hand side of this page. Alternatively, If you would like further information, please email us directly here or call +44 (0) 1242 691 801 to speak to a qualified British and European Trade Mark attorney.