Define: Abandonment Of Trademark

Abandonment Of Trademark
Abandonment Of Trademark
Quick Summary of Abandonment Of Trademark

Abandonment of a trademark refers to the voluntary or unintentional relinquishment of the rights associated with a registered trademark. When trademark owners no longer use or intend to use the mark in commerce, they may abandon it. Abandonment can occur through non-use, failure to renew the registration, or an explicit declaration of abandonment.

To establish abandonment, it is necessary to demonstrate that the trademark owner has discontinued using the mark with no intention of resuming use in the future. Non-use for a continuous period of three years is generally considered evidence of abandonment. However, the specific duration may vary depending on the jurisdiction.

Once a trademark is abandoned, the owner loses its exclusive rights and protections. Abandoned marks become available for others, potentially leading to confusion or dilution of the mark’s distinctiveness. However, abandonment does not automatically remove the mark from the trademark register. It may still be necessary to file a petition for cancellation or removal to remove the abandoned mark from the register officially.

Trademark owners need to monitor and protect their marks to avoid abandonment. Regular use of the mark in commerce, proper registration maintenance, and prompt response to any potential infringement can help preserve the rights associated with a trademark.

What is the dictionary definition of Abandonment Of Trademark?
Dictionary Definition of Abandonment Of Trademark

Abandonment of Trademark:

The act of voluntarily relinquishing or giving up the legal rights and protections associated with a registered trademark. Abandonment occurs when the trademark owner ceases to use the mark in commerce without any intention to resume its use in the future. This can be demonstrated by a prolonged period of non-use, lack of promotion or advertising, or explicit statements indicating the intent to abandon the mark. Once a trademark is abandoned, it loses its legal protection, and other parties may be able to use and register a similar mark without infringing upon the abandoned mark.

Full Definition Of Abandonment Of Trademark

Trademarks are critical assets for businesses, serving as identifiers that distinguish the goods or services of one entity from those of others. The Trade Marks Act of 1994 and related regulations govern trademarks in the United Kingdom. A key aspect of trademark law is the concept of abandonment, which occurs when a trademark is no longer in use, and the owner intends to relinquish rights to it. This legal overview examines the principles, implications, and procedures related to the abandonment of trademarks in British law.

Definition and Legal Framework

In the UK, abandonment of a trademark can be understood as the voluntary surrender or discontinuance of the use of a trademark by its owner, coupled with an intention to abandon. The Trade Marks Act 1994 and various cases provide the framework for assessing abandonment.

Trade Marks Act 1994

The Trade Marks Act 1994 does not explicitly define “abandonment,” but several sections are relevant:

  • Section 46: This section provides for the revocation of a trademark on the grounds of non-use. A trademark can be revoked if it has not been put to genuine use in the UK for five years and there are no proper reasons for non-use.
  • Section 48: This section deals with the surrender of a trademark by the owner. Surrender is a formal process where the owner voluntarily gives up the trademark, which is removed from the register.

Non-Use and Revocation

Revocation due to non-use is the most common form of abandonment. Under Section 46 of the Trade Marks Act 1994, a trademark may be revoked if it has not been used for five years. The rationale behind this provision is to ensure that the trademark register reflects marks that are in active use, thereby avoiding clutter and allowing new entrants to register marks.

To determine abandonment through non-use, two elements are considered:

  1. Period of Non-Use: The trademark must not have been used continuously for five years.
  2. Absence of Proper Reasons for Non-Use: The owner must not have valid reasons for the non-use, such as circumstances beyond their control.

Intentions to Abandon

Beyond non-use, the intention to abandon is critical. Courts seek clear evidence that the owner no longer wishes to use the trademark. This intention can be inferred from actions or inactions that suggest the owner has relinquished their rights.

Evidence of Abandonment

Proving abandonment requires evidence of non-use and intent to abandon. The following factors are commonly examined:

  1. Duration of Non-Use: A significant period of non-use, typically five years as stipulated in Section 46, is a strong indicator.
  2. Owner’s Conduct: Actions or inactions that indicate a lack of interest in the trademark, such as failure to renew the registration or response to infringement.
  3. Public Perception: If the public no longer associates the trademark with the original owner’s goods or services, it can support a claim of abandonment.

Legal Consequences of Abandonment

Abandonment has significant legal implications for trademark owners and third parties.

Loss of Exclusive Rights

Once a trademark is abandoned, the owner loses the exclusive right to use the mark. This loss of rights can be formalised through revocation proceedings initiated by interested parties or by the owner’s voluntary surrender of the trademark under Section 48.

Opportunity for Third Parties

Abandoned trademarks become available for use and registration by third parties. However, they must ensure that the abandoned trademark does not cause confusion with existing trademarks.

Revocation Proceedings

Revocation proceedings can be initiated by any person with a legitimate interest, typically competitors. The process involves filing an application with the UK Intellectual Property Office (UKIPO) or the courts, demonstrating non-use and the absence of proper reasons for non-use.

Procedure
  1. Application: The applicant files a request for revocation with the UKIPO, stating the grounds for revocation and providing evidence of non-use.
  2. Notification: The UKIPO notifies the trademark owner, who can then respond with evidence of use or reasons for non-use.
  3. Decision: The UKIPO examines the evidence and makes a decision. If the decision favours the applicant, the trademark is revoked.
Defending Against Revocation

The trademark owner can defend against revocation by providing evidence of use or demonstrating proper reasons for non-use. Proper reasons may include obstacles beyond the owner’s control, such as import restrictions or regulatory barriers.

Surrender of Trademark

Voluntary surrender under Section 48 is a formal mechanism for abandonment. The owner must submit a request to the UKIPO, specifying the trademark and confirming the intention to surrender it. Upon acceptance, the trademark is removed from the register.

Procedure
  1. Submission: The owner submits a surrender request to the UKIPO.
  2. Confirmation: The UKIPO verifies the request and may seek additional confirmation from the owner.
  3. Removal: Once confirmed, the trademark is removed from the register.

Judicial Considerations

UK courts have addressed abandonment in several cases, providing insights into how abandonment is determined and the evidence required. Key cases include:

  • Premier Luggage and Bags Ltd v. Premier Company (UK) Ltd [2016]: This case highlighted the importance of demonstrating an intention to abandon, not merely non-use.
  • Walton International Ltd. v. Verweij Fashion BV [2018]: The court emphasised the need for clear evidence of non-use and the absence of proper reasons for non-use.

International Considerations

Abandonment rules vary by jurisdiction, but the principles are broadly similar across many countries. International treaties, such as the Paris Convention for the Protection of Industrial Property, provide a framework for trademark protection, including provisions related to abandonment.

Practical Implications for Businesses

Businesses must be vigilant about maintaining their trademarks to avoid abandonment. Key practices include:

  1. Regular Use: Ensure the trademark is used in commerce to maintain validity.
  2. Monitoring: Keep track of renewal deadlines and respond promptly to any challenges.
  3. Documentation: Maintain records of trademark use and any obstacles preventing use.

Conclusion

Abandoning a trademark is a critical aspect of trademark law in the UK, reflecting the need to keep the trademark register updated with marks in active use. Non-use for a continuous period of five years, coupled with an intention to abandon, can lead to the revocation or voluntary surrender of the trademark. Businesses must ensure regular use and proper documentation to avoid the risk of abandonment and the subsequent loss of exclusive rights. The legal framework, including the Trade Marks Act 1994 and judicial precedents, provides clarity on the processes and implications of trademark abandonment, safeguarding the interests of both trademark owners and the public.

Related Phrases
No related content found.
Disclaimer

This site contains general legal information but does not constitute professional legal advice for your particular situation. Persuing this glossary does not create an attorney-client or legal adviser relationship. If you have specific questions, please consult a qualified attorney licensed in your jurisdiction.

This glossary post was last updated: 11th June 2024.

Cite Term

To help you cite our definitions in your bibliography, here is the proper citation layout for the three major formatting styles, with all of the relevant information filled in.

  • Page URL:https://dlssolicitors.com/define/abandonment-of-trademark/
  • Modern Language Association (MLA):Abandonment Of Trademark. dlssolicitors.com. DLS Solicitors. June 12 2024 https://dlssolicitors.com/define/abandonment-of-trademark/.
  • Chicago Manual of Style (CMS):Abandonment Of Trademark. dlssolicitors.com. DLS Solicitors. https://dlssolicitors.com/define/abandonment-of-trademark/ (accessed: June 12 2024).
  • American Psychological Association (APA):Abandonment Of Trademark. dlssolicitors.com. Retrieved June 12 2024, from dlssolicitors.com website: https://dlssolicitors.com/define/abandonment-of-trademark/
Avatar of DLS Solicitors
DLS Solicitors : Family Law Solicitors

Our team of professionals are based in Alderley Edge, Cheshire. We offer clear, specialist legal advice in all matters relating to Family Law, Wills, Trusts, Probate, Lasting Power of Attorney and Court of Protection.

All author posts