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Trademarks Invalidity And Revocation Notes

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Invalidity and Revocation S.70: TM register not guarantee of validity of TMs. Proceedings never initiated by OHIM, only app. for cancellation. There are two reasons why a mark might be removed from the register: 1) Invalid on the basis that it was registered in breach of one of the absolute/relative grounds (s.47). 2) Revocation (s.46). Four grounds for revocation:
? Non-use: TM has not been used for 5 years following date of completion of registration.
? Use of TM has been suspended for an uninterrupted period of 5 years.
? Generic: TM has become the 'common name in the trade'.
? Deceptive: TM used in such a way that it is liable to mislead the public. S.72: Onus of proving the mark should be revoked falls upon the party seeking revocation of the mark. s.100: Modifies position for revocation for non-use. Proprietor must show use has been made of the registered mark.

? Non-use - Protection for marks is only justified by their use. Ensures other traders can safely use similar, as well as identical, marks. Also ensures that opportunistic stockpiling if good marks is fruitless. Test: If a mark has not been put to genuine use within a continuous period of five years between registration and the filing of the request for cancellation, then it will be revoked unless there are proper reasons for non-use. Burden of providing evidence of genuine use, or demonstrating that there are proper reasons for non-use, rests on the proprietor.
+ Jacob J: Referred to these signs as 'abandoned vessels in the shipping lane of trade'.
? What is the genuine use of the mark?*Ansul BV [2003]; Indicated what is required to show genuine use is: 'Use of the mark on the market for the goods or services protected by that mark and not just internal use by the undertaking concerned...Use of the mark must therefore relate to goods or services already marketed or about to be marketed and for which preparations by the undertaking to secure customers are under way, particularly in the form of advertising campaigns'. 'Token use' for sole purpose of preserving the right will not suffice.*La Mer Technologiy [2004]; Use relied upon by the proprietor was very small indeed. Ct said where the use serves a real commercial purpose, even minimal use of the mark, or use by only a single importer in the MS concerned, can be sufficient to establish genuine use within meaning of the Directive. This ruling effectively put paid to any possibility of applying a "de minimis" rule. Thus the crucial factor is the quality of the use. Nb. Unchanged by Hagelkruis Beheer BV [2010] or PAGO [2009].Silberquelle [2009]; WELLNESS held by S for clothing and non-alcoholic drinks. Giving away 800 bottles of a soft drink labelled WELLNESS-DRINK with purchases

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