In an increasingly crowded marketplace, finding an original brand for your business that is not already owned or used by a third party is becoming increasingly difficult. Entering a new market with no customer following or recognition can also be a difficult and lengthy process that may be too costly for a small start-up business that has no guarantee of success. An already crowded trade mark Register may not be as disastrous as you originally think and there may be ways that you can get around existing trade mark registrations or even use them to your advantage.
In this article, our trade mark solicitors explain if you can use a dead or expired trade mark and the potential risks you need to be aware of.
Contents:
- What is a dead trade mark?
- Why would someone want to use a dead or expired trade mark?
- How do I find out if a trade mark is still in use?
- Search the trade mark register
- Common law searches
- Can I register a dead trade mark?
- Can I use a dead or expired trade mark without registering it?
- What are the risks of using a dead or expired trademark?
- What is the rectification process for reviving an expired trade mark?
- What if I want to use a mark that has only just expired or one that is still in use?
- Summary
What is a dead trade mark?
A registered trade mark will be shown on the UK Register as ‘dead’ when it has not been renewed and the registration has expired. Failure to renew the registration could have been intentional, perhaps due to a failed product launch or discontinued brand, or the owner may simply have forgotten to renew the mark or run out of funds to do so.
Trade marks registrations must be renewed every ten years to remain valid. After the expiry date, it is possible to file a late renewal request for up to six months after the expiry date and in exceptional circumstances, an expired registration can be revived up to a year later. Renewal fees must be submitted at the same time as the renewal request.
After these deadlines have passed and no renewal request has been filed, the trade mark will be noted on the Register as a ‘dead’ trade mark.
Why would someone want to use a dead or expired trade mark?
In some circumstances, either the previous owner or a third party with no previous connection to the brand may wish to resurrect and start using a dead trade mark again, in order to benefit from existing or past goodwill that has already been built up under the brand.
This could be less expensive and time consuming compared to building a new brand from scratch as there may already be a large customer base or following connected with the trade mark. Sometimes, a particular brand may have nostalgic value and evoke an emotional response from a certain target audience, bringing back childhood memories or associations with a bygone age. This may imbue the brand with a greater attractive force, even for products or services that have no connection to those originally offered under the brand.
How do I find out if a trade mark is still in use?
You should be careful when choosing to resurrect a dead trade mark that you do not know much about.
There are several reasons as to why a trade mark registration may have been allowed to lapse. The owner could still be using the mark but have failed to pay the renewal fee or failed to submit adequate use evidence in defence against a revocation action.
It is important to conduct a thorough investigation into whether the mark is still in use, before deciding whether to appropriate it as your new brand. If you do not and you find that you have started to use a mark that is still in use as an unregistered trade mark by a third party, you could be liable for ‘passing off’ and possibly also trade mark infringement, if the mark is re-registered by someone else.
Passing off is a common law action available in the UK to businesses who have generated goodwill in a brand through their use of it for particular goods or services. If someone else starts to use that trade mark, or a confusingly similar mark, this may constitute a misrepresentation to the consumer and cause damage to the original business. So the original business can take the third party to court to stop them from trading under the mark and seek an order for damages for losses that they may have suffered as a result of the third party use of the mark, or an account of lost profits. It is only possible to bring a claim for passing off if there is existing goodwill in the trade mark, being generated through the claimant’s active use of the mark in business or recent use where some residual goodwill remains.
Search the trade mark register
The first checks that you should carry out if you want to use or register a ‘dead’ or expired trade mark are clearance searches of the trade mark Register(s) in the territories in which the mark may have been in use. This will show you whether the mark is still actively registered or if a previous registration has expired. It may also show you which goods and services the mark was registered for originally so that you can check whether it has any existing goodwill in your particular industry. A Register search can also reveal who the owner of the dead trade mark was so that you can conduct checks to see if they are still trading under the trade mark or perhaps contact them to enquire about acquiring rights to the mark.
Common law searches
A search of the trade mark Register(s) will not tell you whether the mark is still in use in commerce or not. For this, you will need to conduct a common law/in-use search, using an experienced IP investigation professional, if necessary. Common law searches involve comprehensive checks of the world-wide web, Companies House, domain name registries, social media platforms and other business and company databases and records.
It may be difficult to trace the original registered owner of the mark as the company could have been dissolved or the owner may not have informed the Registry of a change in its name or contact details. The registration may also have been assigned to a third party or licensed to a third party for them to use, again without the Register being updated to reflect such changes.
Can I register a dead trade mark?
You can register a dead trade mark in one of the following ways.
If the dead trade mark registration only expired less than a year ago, the owner or a legal assignee of the owner can apply to have it revived in exceptional circumstances. This process is explained below.
Or, you could file a new registration application for an identical or similar mark to the dead trade mark, in your own name. This could be a successful strategy if the original mark has genuinely been abandoned and if your searches of the Registry have not revealed any prior, similar actively registered marks for the same or similar goods or services.
Can I use a dead or expired trade mark without registering it?
You might be able to use an expired trade mark without registering it but there are risks involved if you do not conduct thorough research beforehand. If you use the mark without registering it, there is a risk that a third party could apply to register the same or a similar mark in the future and then bring an action against you for infringement. Or, the original owner could resurrect their original registration or re-register the same mark, if they are still using it in business.
What are the risks of using a dead or expired trademark?
Pre-existing Goodwill in the mark
It is important to note that although a trade mark may have expired, the original owner or a licensee could still be using the mark and so still own goodwill in the brand. This would give them a basis for preventing others from using the mark as they could bring an action in the courts for passing off.
Even if the original owner has stopped using the expired mark, this may be a temporary hiatus and they may intend to re-enter the market at some point in the future. If there is some existing residual goodwill in the brand the previous owner may argue that its use by a third party would create confusion or mislead the consumer.
Or, if one particular trade mark in a series or ‘family' of similar marks has expired or its use has been discontinued by the owner, it could be that another similar mark is still actively in use and/or still registered. The owner of the similar mark could take action against you for passing off or trade mark infringement because of your use of a confusingly similar mark for identical or similar goods and services.
Pre-existing Copyright in a logo mark
If the dead trade mark is a logo, the copyright in the logo could still belong to a third party such as the original designer. Copyright can last for the life of the author plus seventy years and you may have to conduct additional research if you want to use an existing logo and perhaps secure a written assignment of its copyright if you can locate the original owner.
Bona Vacantia
The dead trade mark may also have been acquired by a third party and the Register may not yet have been updated to reflect the change in ownership. This could occur where a previous corporate or business owner has become insolvent and ceased to exist and property in the existing trade mark has reverted to the Crown as 'bona vacantia’ (meaning ‘ownerless goods’). Assets can be purchased from the Bona Vacantia division of the Treasury for a negotiated price. So, if you are not careful, you could start to use a dead mark thinking that the registered owner has ceased to exist when a new owner has already purchased the registration and not yet applied to update the Register accordingly.
You can apply to purchase a trade mark that has become bona vacantia yourself. You can then file an action to have the registration revived at the Registry, provided it has not yet been a year since the registration expired. You will still need to conduct research to ascertain whether the mark is in use by an assignee of the liquidated company or by an unauthorised third party that has started to use the mark without registering it. If the original company owner is still in administration or liquidation, you can contact the administrators or liquidators to make enquiries as to what they intend to do with the mark and whether you can purchase it.
If a non-corporate owner of a registered mark has deceased, ownership of the existing or expired mark may have passed to a third party, in accordance with a will or trust or, if there is no will, to the residual estate. The Register may still show the name of the deceased owner if an assignment has not yet been recorded. In such circumstances, you may need to contact the estate’s executor or administrator to enquire as to whether ownership of the mark has been transferred or whether you can purchase it.
If the trade mark registration has become dead and it is no longer possible to revive it, then you would not need to purchase it as bona vacantia or from the deceased owner’s estate. You would still need to investigate whether the mark or a similar mark is in use and whether there are any prior similar registered marks that could prevent you from using or registering it yourself.
What is the rectification process for reviving an expired trade mark?
If a mark has not been renewed but it is still less than a year since the expiry date, the owner noted on the Register, or a new owner if an assignment is also being recorded, can apply to have the registration revived, by filing a TM13 form at the UKIPO, together with a revival fee and a written statement from the applicant explaining why the mark was not renewed on time. This must be for unplanned circumstances outside of the owner’s control. There is an extra fee of £100 that has to be paid, along with the original renewal fee, which is not refunded if the resurrection application is unsuccessful.
What if I want to use a mark that has only just expired or one that is still in use?
You can try to contact the owner of a recently expired trade mark to enquire about its availability and see if they are interested in assigning its ownership to you or licensing its use to your business. It may be that they are happy to see the brand being revived and have important information that they can sell or pass on to you concerning any associated rights or know-how involved in resurrecting the old brand, such as customer lists, product designs, patents and copyright.
You may also be able to use the same trade mark for a different type of product or service, provided it is not a very well-known mark with goodwill extending to a wider range of goods and services than those currently being provided by an existing owner.
Summary
With trade mark Registers becoming increasingly crowded, it is important to seek professional advice before concluding that a chosen trade mark is available or not available for your business to use and register. The situation in practice may not always be as it initially seems from the Register and some further research and pro-active enquires could make a huge difference to your branding strategy and ultimate success in gaining an advantage over your competitors in a new market.
