Tribunal Practice Notice (TPN 1/2007)

Applications for revocation on the grounds of non-use: calculation of the date of revocation

1. This practice notice is to clarify the calculation of the date from which revocation takes place under the grounds of sections 46(1)(a) and (b) of the Trade Marks Act (the non-use provisions). In box 7 of Form TM26(N), applicants for revocation on the grounds of non-use must specify the date (depending on whether section 46(1)(a) or (b) is invoked) on which the rights of the proprietor should be deemed to have ceased. Some applications received by the Trade Mark Registry’s Law Section erroneously specify a date which is, in fact, often a day too early. The correct approach to calculating the date is explained below.

2. The Act says:

"46.- (1) The registration of a trade mark may be revoked on any of the following grounds-

(a) that within the period of five years following the date of completion of the registration procedure it has not been put to genuine use in the United Kingdom, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use;

(b) that such use has been suspended for an uninterrupted period of five years, and there are no proper reasons for non-use;

(6) Where the registration of a trade mark is revoked to any extent, the rights of the proprietor shall be deemed to have ceased to that extent as from-

(a) the date of the application for revocation, or

(b)if the registrar or court is satisfied that the grounds for revocation existed at an earlier date, that date."

3. In Philosophy di Alberta Ferretti Trade Mark [2003] R.P.C. 15, the Court of Appeal held that an application for revocation on the grounds of non-use may be made, at the earliest, as soon as the initial five year period (following completion of the registration procedure) has ended. A successful application for revocation on the grounds of non-use, as provided for under section 46(6)(a) above will self-evidently mean that the date for revocation is the date that the application for revocation was made. However, that date must not be less than five years from the date the registration procedure was completed. In WISI Trade Mark [2006] RPC 17, Geoffrey Hobbs QC, sitting as the Appointed Person said, at paragraph 22:

“This permits revocation with effect from the day following the fifth anniversary of completion of the registration procedure in the case of an application which succeeds under s.46(1)(a) and with effect from any subsequent date at which there has been suspension of use for an uninterrupted period of five years in the case of an application which succeeds under s.46(1)(b).”

4. For instance, if the registration procedure was completed on 18 March 2000, the five year period would expire on 18 March 2005. An application for revocation for non-use could only be made after the latter date. The earliest date that an application for revocation could be made would therefore be 19 March 2005.

5. Consequently, where an application for revocation on the grounds of non-use is made under section 46(1)(a), the applicant should ensure that it is made, at the earliest, on the day following the fifth anniversary of completion of the registration procedure. If the revocation action is successful, rights in the registration (partial or full) will cease to exist, under section 46(6)(a), on the day following the fifth anniversary of the completion of the registration procedure.

Table shows examples of the stages in an application for revocation under section 46(1)(a). Read across the first row to see the stage headings. Read across the second row to see the example dates.
Completion of registration procedure Five year period in which to commence use starts Five year period in which to commence use ends Earliest date the revocation application can be made Successful revocation date
18.3.2000 19.3.2000 18.3.2005 19.3.2005 19.3.2005

6. In the case of a revocation action founded upon section 46(1)(b) of the Act, where the applicant claims that the mark has not been used in the five years prior to the application, section 46(6)(a) of the Act will also apply to a successful revocation. In this instance, if the application is made on 18 March 2005 and this is the revocation date that is sought, the five year period during which there was no use will run from 18 March 2000 to 17 March 2005.

Table shows examples of the stages in an application for revocation under section 46(1)(b). Read across the first row to see the stage headings. Read across the second row to see the example dates.
Completion of registration procedure Application for revocation filed Revocation date sought Five year period in which no use of mark Successful revocation date
2.4.1998 18.3.2005 18.3.2005 18.3.2000 to 17.3.2005 18.3.2005

7. Revocation actions may also be brought on the grounds of section 46(1)(b), but for a five year period which does not coincide with the date of the application (that is, that section 46(6)(b) will apply). For example, if the applicant claims a revocation date of 18 March 2005, this means that the five year period for which there has been no genuine use of the mark will run from 18 March 2000 until 17 March 2005, with the rights of the proprietor ceasing to exist on 18 March 2005: the revocation date.

Table shows examples of the stages in an application for revocation under section 46(1)(b) where section 46(6)(b) applies. Read across the first row to see the stage headings. Read across the second row to see the example dates.
Application for revocation Revocation date sought Five year period in which no use of the mark Successful revocation date
1.12.2006 18.3.2005 18.3.2000 to 17.3.2005 18.3.2005

8. This notice confirms the correct approach and does not represent a new practice.

Raoul Colombo
Head of Law Section
Trade Marks Registry

Intellectual Property Office
Concept House
Cardiff Road
Newport
South Wales
NP10 8QQ
United Kingdom

Phone +44(0)1633 811407
Fax +44(0)1633 811175