Guidance

Revocation (non-use) proceedings

Updated 18 November 2019

1. What is revocation for reasons of non- use?

Revocation on grounds of non-use is the legal procedure for removing a registered trade mark from the UK register because the trade mark has not been used in the five years since the trade mark was registered, or for any uninterrupted period of five years and there are no proper reasons for non-use. It is possible to apply to remove the entire registration or just the registration of the mark for some of the goods and/or services.

Who can apply to have a registration revoked?

Anyone can apply for revocation.

When can an application be made?

An application for revocation can be made at any time after the trade mark has been registered for at least five years with the earliest date of revocation being the day following the fifth anniversary of the registration date.

How do I calculate the 5 year period?

Detailed guidance on how to calculate the 5 year non use period is provided in the Tribunal Work Manual

2. What does it cost?

How can I apply to have a registration revoked?

If you want to make an application for revocation, then you must file a TM26(N), Application to revoke a registration or a protected international trade mark (UK) for reasons of non-use accompanied by a £200 fee. It must state the dates between which it is alleged the trade mark has not been used.

What should I do first?

If you are considering making an application for revocation, you should approach the registered trade mark proprietor to see if you can resolve the conflict 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 surrenders the registration without defending it, you will not be awarded any costs and you will not recover the cost of filing the application for revocation.

What should I do if I am notified that my registration may be the subject of an application for revocation?

You may wish to consider obtaining professional legal advice from a registered trade mark attorney, or patent attorney, or a solicitor before you make any decision on 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. If you decide to defend your trade mark registration, it will be necessary for you to file evidence showing that your mark has been used. The Tribunal can provide you with a pro forma witness statement for this purpose. Genuine use of the trade mark in the five years preceding the application for revocation will defeat the application irrespective of the dates of alleged non-use. Alternatively, if you have proper reasons for non use, you may file a witness statement explaining what they are.

What are proper reasons?

Proper reasons for non-use must be reasons outside the control of the trade mark proprietor, such as export or legal restrictions.

What if I have used the mark in a slightly different form to the way in which it was registered?

Use of the mark in a form which does not alter its distinctive character (as compared to the form in which it was registered) qualifies as use of the registered mark. So minor variations, such as using a mark registered in block capitals in upper or lower case and/or in any normal typeface will make no difference. Similarly, using a mark registered in black and white in particular colour(s) makes no difference.

Can you recommend a trade mark or patent attorney, or a solicitor?

We cannot provide any recommendation but you can contact the Chartered Institute of Trade Mark Attorneys, the Chartered Institute of Patent Attorneys, or the Law Society.

How can I limit the list of goods/services to overcome the revocation?

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 entire trade mark registration 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 revocation 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 revocation, 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(N) to?

You must send the TM26(N) either by post to:

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

3rd Floor
10 Victoria Street
London
SW1H 0NB

All other non fee bearing forms for the Tribunals can be sent to [email protected].

Do I have to send a copy of the TM26(N) to the registered proprietor?

No, the Tribunal will send a copy of the TM26(N) to the registered proprietor and the Tribunal will send to 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(N) has been received?

The Tribunal will check the TM26(N) to make sure that the correct fee has been paid and that sufficient information has been provided for the revocation 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 revocation.

What happens if I haven’t sent the correct fee with the TM26(N)?

In order for the TM26(N) 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(N)?

Once the formalities check has been concluded, the Tribunal will serve the TM26(N) on the registered proprietor.

What must the registered proprietor do?

The registered proprietor will have two months from the date the TM26(N) is served to file a TM8(N) Notice of defence and counterstatement (no fee required) setting out the defence of the registration together with evidence to show that the trade mark has been used during the relevant period(s). However, if the counter statement is filed without any evidence of use, the registered proprietor will be allowed a period of not less than two months within which to file the evidence.

If the registered proprietor agrees with anything that the applicant has said in the statement of reasons, he should say so. If the registered proprietor does not accept the applicant’s grounds, he should say why he does not accept the applicant’s grounds and he can also give any additional reasons he has to support the trade mark registration.

Can the time period for submitting a form TM8(N) be extended?

No, the period for filing the TM8(N) cannot be extended.

What happens if I do not file a TM8(N)?

If no notice of defence is submitted within the period allowed, the Tribunal may treat the registered proprietor as not opposing the application. If the application was only in respect of some of the goods and/or services, the registration will be revoked in respect of those specified items and the mark will remain registered for the remaining goods/services.

Will I have to pay any costs if I do not file a TM8(N)?

If you do not file a TM8(N) and the applicant did not give you a reasonable chance to surrender the registration before filing the application for revocation, 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 revocation, then you may be liable for some limited costs.

What happens after the form TM8(N) has been received?

Once the formalities check has been completed and the Tribunal has accepted the TM8(N), it will be served on the applicant. Evidence filed with the TM8(N) by the registered proprietor will also be sent to you. If the proprietor does not file such evidence with the TM8(N) the parties will be provided with a timetable to file evidence and/or written submissions.

3. Evidence in non-use revocation

How does the registered proprietor demonstrate evidence of use?

The evidence must show that the trade mark has been used by the registered proprietor or with his consent. 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 relevant five year period or in the five years leading up to the date of the application (if different) 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 proportion of the relevant 5 year period 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 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. The Tribunal can provide you with a pro forma witness statement for this purpose.

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 revocation 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 the applicant does not wish to submit any evidence?

If the applicant does not wish to file evidence 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 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 XXXX 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.

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 form 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 be provided.

What happens after the form 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 and will only 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 revocation?

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 revocation or the defence; and the striking out of particular grounds of revocation.

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?

No, 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. 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.

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?

The current scale may be viewed at TPN1/2023. Previous scales can be viewed on the National Archives website.

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.