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1. What is invalidation?
Invalidation is the legal procedure to cancel a registered trade mark. The applicant may assert that the registered trade mark is invalid on either absolute or relative grounds and an application may seek to invalidate the entire registration, or only invalidate the registration of the mark for some of the registered goods or services.
What are absolute grounds?
The absolute grounds cover defects in the trade mark itself.
The most common absolute ground for invalidation is that the trade mark is descriptive of the registered goods and/or services, or that it is generic for those goods/services, or otherwise non-distinctive and should therefore be free for everyone in that line of trade to use.
What are relative grounds?
Relative grounds means that there is an earlier trade mark or earlier right (which does not have to be registered) owned by the applicant with which the registered trade mark would conflict if it were used.
When can an application be made?
An application can be made at any time after registration.
Who can apply for invalidation?
If the registered trade mark was published for opposition purposes in the trade marks Journal before 1 October 2007, then anyone can apply to have it declared invalid on either absolute and/or relative grounds.
If the trade mark was published on or after,1 October 2007 then anyone can apply to have it declared invalid on absolute grounds, but only the proprietor or licensee of an earlier trade mark or right can apply to have the registration declared invalid on relative grounds
2. What is the cost of an invalidation?
How can I apply to have a trade mark declared invalid?
If you want to make an application for invalidity, then you must file a TM26(I) Application to declare invalid a registration or a protected international trade mark (UK), accompanied by a £200 fee, which must contain details of the grounds on which the application is based.
What should I do first?
If you are considering making an application for invalidity, you should approach the registered trade mark proprietor to see if you can resolve the matter without the need to resort to legal proceedings. If you file an application without first having contacted the registered trade mark proprietor, and the registered proprietor then surrenders the trade mark registration without defending it, you will not be awarded any costs and you will not recover the cost of filing the application for invalidation.
What should I do if I am notified that my registration may be the subject of an application for invalidity?
You may wish to consider obtaining professional legal advice from a registered trade mark, or patent attorney, or a solicitor before you decide how to proceed.
Will the Tribunal be able to advise me on how to prosecute my case?
No, the Tribunal must remain impartial at all times although we can help you with procedural matters.
Can you recommend a trade mark or patent attorney, or a solicitor?
How can I limit the list of goods/services to overcome the invalidation?
You can inform the Tribunal of any changes to your registration by submitting a TM23 Notice of partial surrender. The Tribunal will consider the amendment and tell you if it is clear enough to be accepted.
What happens if the proposed amendment is rejected by the Tribunal?
The Tribunal will tell you why the proposed change is not acceptable, which may help you to propose an alternative acceptable restriction.
How much does it cost to file a TM23?
There is no fee payable with this form.
How can I surrender my registration in full?
You can surrender your registration by submitting a TM22 Notice to surrender a registration’.
How much does it cost to file a TM22?
There is no fee payable with this form.
What happens after I have surrendered my registration?
The trade mark will be removed from the register.
Will I have to pay any costs if I surrender my registration?
If you surrender your registration before the application for invalidity is filed, you will not be liable for costs. However, if you surrender your registration after the application is filed, and the applicant has, prior to filing the application for invalidity, given you a reasonable chance to surrender your registration then you may be liable for some limited costs.
To whom do I send the TM26(I) to?
You must send the TM26(I) by either post or fax to:
Intellectual Property Office
Intellectual Property Office
10 Victoria Street
The fax number to be used when sending fee bearing forms is: 01633 817777.
All other non fee bearing forms for the Tribunals can be sent to email@example.com.
If I submit a fax do I have to send the original document as well?
No, this is not necessary unless you are specifically asked to do so by the Tribunal.
Do I have to send a copy of the TM26(I) to the registered proprietor?
No, the Tribunal will send a copy of the TM26(I) to the registered proprietor and the Tribunal will send the applicant a copy of any defence filed in response. However, the Tribunal will not, as a matter of course, copy any other document. To ensure fairness and transparency of proceedings, it is imperative that any correspondence, including forms, sent to the Tribunal is copied to the other side and contain confirmation that it has been copied.
If parties persistently fail to copy correspondence and documents to the other side, this will be regarded as unreasonable behavior and there may be cost implications at the conclusion of the proceedings.
What happens once the TM26(I) has been received?
The Tribunal will check the TM26(I) to make sure that the correct fee has been paid and that sufficient information has been provided for the invalidity action to proceed. If further clarification is required, the Tribunal will write to the applicant and allow a short period of time to clarify the grounds of invalidity.
What happens if I haven’t sent the correct fee with the TM26(I)?
In order for the TM26(I) to be validly filed it must be accompanied by the correct fee. The Tribunal will write to you and allow a short period of time for the balance of the fee to be submitted.
When will the registered proprietor know that I have submitted a TM26(I)?
Once the formalities check has been concluded, the Tribunal will serve the TM26(I) on the registered proprietor.
What must the registered trade mark proprietor do?
The registered proprietor will have two months from the date the TM26(I) is served to file a TM8 Notice of defence and counterstatement.
If the registered proprietor agrees with anything that the applicant has said in the statement of grounds for invalidation, he should say so. If the registered proprietor does not accept something that the applicant has said, he should say why he does not accept the applicant’s grounds; whether the applicant is put to proof of the facts he relies upon and he can also give any additional grounds he has to support the trade mark registration.
How much does it cost to file a TM8?
There is no fee payable with this form.
Can the time period for submitting a TM8 be extended?
No, the period for filing the TM8 cannot be extended.
What happens if I do not file a TM8?
If no notice of defence is submitted within the period allowed, the Tribunal may treat the proprietor as not opposing the application. If the application was only in respect of some of the goods and/or services, the registration is liable to be invalidated in respect of those specified items and the remainder of the specification will remain registered. If the application was in respect of all of the goods and/or services, the entire registration is liable to be declared invalid.
Will I have to pay any costs if I do not file a TM8?
If you do not file a TM8 and the applicant did not give you a reasonable chance to surrender the registration before filing the invalidation, you will not be liable for costs. However, if you did get a reasonable opportunity to surrender and you put the applicant to the cost of filing the application for invalidation, then you may be liable for some limited costs.
What happens after the TM8 has been received?
Once the formalities check has been completed and the Tribunal has accepted the TM8, it will be served on the applicant. At the same time the parties will be provided with a timetable to file evidence and/or written submissions.
3. Evidence in invalidation proceedings
What evidence do I need to file?
Unless the applicant for invalidation has been required to show use of an earlier mark relied upon as the basis for invalidation on relative grounds, you do not have to file evidence. However, certain matters, such as the existence of an earlier unregistered right cannot be proved without evidence. As this is a matter for the parties to decide, the Tribunal will not normally provide advice on the content of evidence. However, the Tribunal does have the power to require parties to file evidence covering particular issues.
How should I present my evidence?
Evidence is normally given in the form of a witness statement, unless the Tribunal decides that it should be provided by way of an affidavit or statutory declaration.
What is a witness statement?
A witness statement is a legal document setting out the facts of the case as you believe them to be. The information provided must be based on the witness‟ own personal knowledge; it should stick to facts that relate to the grounds for invalidation and should not be used to present legal arguments or the opinions of the parties. Legal arguments may be made in a letter.
The witness statement must clearly identify the proceedings; the witness must give their full name and address; it must be signed, dated and include a statement of truth.
Do I attach any exhibits to the witness statement?
Any exhibits filed with the witness statement must be clearly identified and referenced with the initials of the witness and numbered sequentially. For example, a witness statement submitted by John Smith with three exhibits would be referred to as JS1, JS2 and JS3.
Each exhibit must have a header sheet which clearly identifies the case reference number and also the exhibit. For example, This is exhibit JS1 referred to in the witness statement made by John Smith dated this…day of…2012.
Do I have to number all of the exhibits?
All individual exhibits of more than 4 pages must be numbered and any evidence submitted with unnumbered pages will be returned. The page number should be applied to the bottom right hand corner of each page.
Does a witness statement have to be sworn under oath?
No, but it must be signed by the person making it and it must include a statement of truth.
What is a statement of truth?
A statement of truth is a statement signed by the witness to verify that the contents of the witness statement are true. It is worded I believe that the contents of this statement are true. Failure to provide a statement of truth will result in the witness statement being returned.
What happens if a party does not wish to submit any evidence of facts?
If a party does not wish to file evidence of facts but merely wishes to comment on the other side’s evidence or challenge its validity, then this can be presented as a written submission in the form of a letter.
You must send a copy of your evidence, or written submissions, to the other side in the proceedings.
Can the time period for submitting evidence or submissions be extended?
The period allowed is considered as sufficient in most cases, however the Tribunal may in exceptional circumstances extend the time periods for filing evidence and/or submissions.
Do I have to send actual samples of the product bearing the trade mark?
No. If samples of the mark in use are to be submitted as exhibits to a witness statement, then the Tribunal will accept photographs of the product bearing the trade mark. The witness statement should date the use shown in the photographs, i.e. ‘Exhibit A is a photograph showing how the mark was used in relation to XXXXX in the period MM/YYYY to MM/YYYY’.
Can I send my evidence attached to an email?
Yes, but any evidence must be filed in a standard accessible format e.g. Windows® Media compatible.
What is proof of use evidence?
When an application for invalidation is based upon an earlier trade mark which has been registered for five years or more at the date when the application for invalidation was filed and, if applicable, 5 years or more before the application date (or priority date, if applicable) of the trade mark application you wish to have declared invalid, the applicant is required to state, on the TM26(I), whether, and for which goods and services, the earlier registered trade mark has been used during the five year period that precedes those dates. The proprietor of the contested mark may accept the applicant’s statement, or he or she may put the applicant to proof of use of the earlier mark.
What must proof of use evidence show?
The evidence must show that the earlier mark has been put to genuine use in relation to the goods/services for which it is registered, during the relevant periods.
The evidence should demonstrate e.g.
- for which goods or services the trade mark has been used
- the financial turnover from sales of these goods or services under the trade mark during the five year period
- if possible, examples of sales records showing the mark in use for the goods/services for which use is claimed e.g. copies of sales invoices or similar sales records
- how the goods/services have been advertised under the trade mark, if possible with examples of such advertising from the relevant period
- the period of time during which the trade mark has been used and the geographical area in which it has been used
- how the trade mark is used in relation to the goods/services e.g. on labels, signs, invoices, advertising materials etc
How can I apply for an extension of time?
A request for additional time to submit evidence or submissions beyond that which you have been allowed should be made before the expiry of the relevant time period by submitting a TM9 Request for an extension of time accompanied by a £100 fee.
What do I need to do?
Any request must be fully supported with reasons as to why the additional time is needed. The request must explain what has already been done; what is left to do; what has prevented you from filing the evidence in time; and how much additional time is required. In the event that the request has been made after the set time period has expired, full and detailed reasons for the delay in making the request must also be provided.
What happens after the TM9 has been received?
On receipt of a properly filed TM9, the Tribunal will make a preliminary decision on whether to allow or refuse it. The Tribunal may on occasions decide that the amount of time requested is too long but may allow a shorter period of time. The parties will be informed in writing and a period of fourteen days will be allowed for either party to challenge the decision and request a procedural hearing. Unless a party objects to the preliminary view, and provides written reasons for doing so, the Tribunal‟s decision will be implemented.
What is a stay of proceedings?
If once the evidential stages have begun the parties wish to seek a negotiated settlement, they can make a joint request in writing to stay, or suspend, the proceedings.
What must the parties do when requesting a stay?
The parties will have to provide the Tribunal with full reasons to support the request and where settlement negotiations have already started, details of any action, together with dates, must be provided. The parties are not expected to provide the Tribunal with confidential or without prejudice material, but the Tribunal must be satisfied that serious progress is being made towards a settlement. The parties will be expected to explain whether the time requested is merely to resolve minor issues or whether there exists serious barriers to an amicable resolution. In addition, the parties must provide a realistic assessment of when they expect a conclusion to the negotiations.
What is ‘Without Prejudice’ material?
The term without prejudice is used when one side to a dispute makes a statement to the other side intended to settle the dispute.
If documents containing such statements are filed, the Tribunal will return them and state that they cannot be taken into account.
When will I know the outcome of the invalidation?
Once the periods for filing evidence or submissions are complete, the parties will be invited to file final submissions or request a hearing. The Tribunal will indicate whether it believes that a hearing is necessary. It remains open to either party to request a hearing.
Following either a full review of the papers on file, or a hearing, the Hearing Officer will issue a decision in writing. The decision will explain the background to the case and why the Hearing Officer has reached the decision made. It will also refer to the relevant trade mark law and legal authorities. It may also include an order that one side should pay a contribution to the costs to the other.
What is a Hearing?
A party has a right to be heard before any adverse decision is taken against them. The person who decides the case is called a “Hearing Officer”.
There are three types of hearings which may occur during the course of proceedings. These are Procedural Hearings, Case Management Conferences and Substantive Hearings.
What is a Procedural Hearing?
Where procedural disagreements arise and a party will not accept the Tribunal’s preliminary view on the matter, a Procedural Hearing may be requested to resolve the issue. Examples of matters which are resolved at such a hearing are the admissibility of the application for invalidity or the defence and the striking out of particular grounds for invalidation.
What is a Case Management Conference?
A Case Management Conference (CMC), is a hearing appointed by the Tribunal to decide what needs to be done on a case and by whom. If procedural disagreements arise after a defence has been filed, the matter will usually be resolved by holding a CMC. Examples of matters resolved at such a hearing would be extension of time requests, whether cases should be consolidated (joined together), confidentiality orders, suspension of proceedings, and the cross-examination of witnesses.
At the CMC, the Hearing Officers will use their wide case management powers to make appropriate directions to the parties covering all aspects of the future management of the case. Such directions may include the setting of a timetable and structured framework to ensure that the proceedings are concluded within a timely manner whilst keeping costs to a minimum.
What is a Main Hearing?
The Main Hearing will deal with the substantive issue of the dispute.
Do I have to attend the hearing in person?
If the invalidity is only on absolute grounds, then you do not have to attend the hearing though you may want someone to attend on your behalf e.g. a trade mark Attorney. If no one attends, you may instead rely on written submissions which are submitted before the hearing and copied to the other side.
When the invalidity is based on relative grounds, the Tribunal will review the case and will either direct the parties to attend a hearing, or alternatively, suggest that the decision can be taken from the papers. It is still open to the parties to request a hearing if they so wish.
Hearings are generally held via a video conference link between our London and Newport offices, or on the telephone. In certain circumstances, when for example cross-examination of a witness has been requested, we can arrange for a hearing to be held in person in either London or Newport. Hearings are taken by Hearing Officers who have delegated powers to act on behalf of the Registrar.
What happens at a hearing?
Each party attending will have the opportunity to put their case to the Hearing Officer. The Hearing Officer will ask any questions he or she has.
What does it cost?
There is no charge for a hearing.
However, the successful party may make a claim for an award of costs to be given in its favour. Any costs awarded in proceedings before the Tribunal will not cover all the costs of the proceedings and are only intended to provide a contribution towards the costs of the successful party.
4. How to appeal the Hearing Officer’s decision?
Can I challenge the Hearing Officer’s decision?
If either party feels that in reaching his decision, the Hearing Officer has made an error on a point of law, or that he or she has made an unreasonable decision on the facts, then an appeal can be filed within 28 days from the issue of the decision.
To whom do I appeal?
The appeal can be either to the Appointed Person or to the High Court.
What is an Appointed Person?
An Appointed Person is a senior intellectual property lawyer who is appointed by the Ministry of Justice; he or she is wholly independent of the Tribunal.
The Appointed Person offers a low cost alternative to appealing to the High Court.
How do I appeal to the Appointed Person?
An appeal to the Appointed Person is made by filing a TM55 Notice of appeal to the Appointed Person (no fee required). The notice of appeal must include the grounds of the appeal together with the relevant trade mark law and legal authorities relied upon in support of each of the grounds of appeal.
What does it cost?
There is no charge for an appeal hearing.
However, the successful party may make a claim for an award of costs to be given in its favour. Any costs awarded in proceedings before the Appeal Tribunal will not usually cover all the costs of the appeal and are only intended to provide a contribution towards the costs of the successful party.
How do I appeal to the High Court?
The procedure for making an appeal directly to the High Court is set out in the Civil Procedure Rules Part 52 for Appeals and Part 63 which relates to Intellectual Property claims.
If you appeal to the High Court you should send us a copy of your appeal and keep us informed of the outcome as the Tribunal does not play any part in those proceedings.
What does it cost?
You will need to ask the court for information on court fees and any award of costs should your appeal be unsuccessful.
Can I challenge the outcome of the appeal?
The Appointed Person is an appellate tribunal whose decision is final. Decisions by the High Court can be appealed, if the party is given leave, to the Court of Appeal.
5. Costs in invalidation proceedings
Will I be able to recover all of my costs before the Tribunal or the Appointed Person?
At the conclusion of any proceedings before the Tribunal the successful party may request that an award of costs be made in its favour. There is no upper limit to the award which may be made but it is established practice that the Tribunal awards costs from an official scale. The scale reflects a variable amount for the preparation, filing and examination of forms and for the amount and relevance of any evidence filed. A party without legal representation will be fully reimbursed the cost of any official fees, but will only receive 50% of the amount from the official scale. This ensures that the unrepresented party is not overcompensated for the cost of the proceedings.
What is the scale?
Will you enforce the costs award if the other side doesn’t pay?
No. The enforcement of any award is a matter for the successful party. An order for costs may be enforced in the same way as any order of the High Court. Failure to pay an award may result in the details of the failure to comply with the costs award being published on the IPO web site.