We’re not all going on a summer holiday – what are the implications for all those unused trade mark registrations?

It looks like summer holidays may be off the cards for 2021. This brings a host of issues for the travel industry, including impacting their Intellectual Property. Some may have planned the launch of new goods and services, perhaps delayed from 2020 due to the COVID-19 pandemic, or perhaps planned for 2021 in anticipation of us being out of restrictions by then. What are the implications for trade mark registrations that are not in use?

Anyone can seek to cancel a UK or EU trade mark registration on the grounds of non-use once it has been registered for five years or more. If such a UK or EU registration has not been put to genuine use in the relevant territory, by the proprietor or with his consent, in relation to the goods or services covered by the registration, and there are no proper reasons for non-use, that registration can be cancelled. It is possible to apply to remove the entire registration or just some of the goods and/or services.

Registrations that are under five years old cannot be cancelled for non-use. Therefore the delayed launch of any recently registered trade marks should not be of immediate concern from the perspective of cancellation. But what if the registration was acquired some years ago but due to recent events the launch could not go ahead as planned? In this case, the registration could be saved from cancellation if there are proper reasons for non-use, which must be reasons outside the control of the trade mark proprietor, such as export or legal restrictions. The pandemic may, therefore, provide a defence to non-use but this will depend on the particular facts of each case with perhaps some goods or services leading to greater leniency than others. 

There are different factors to consider if a mark was in use but that use has temporarily ceased. If the use has ceased for fewer than five years the registration should survive a non-use attack. We would hope to return to a more normal existence long before five years has elapsed so hopefully use will resume before this becomes a problem.

It is worthwhile retaining dated, detailed evidence of planned launches along with any reasons for delays in case a non-use challenge is commenced. And once a mark is in use, retaining dated evidence of use for the goods/services covered in the relevant territory can make defending a non-use attack a more straightforward process.