(1)The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of section 3 or any of the provisions referred to in that section (absolute grounds for refusal of registration).
Where the trade mark was registered in breach of subsection (1)(b), (c) or (d) of that section, it shall not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered.
(2)The registration of a trade mark may be declared invalid on the ground—
(a)that there is an earlier trade mark in relation to which the conditions set out in section 5(1), (2) or (3) obtain, or
(b)that there is an earlier right in relation to which the condition set out in section 5(4) is satisfied,
unless the proprietor of that earlier trade mark or other earlier right has consented to the registration.
[F1(2A)But the registration of a trade mark may not be declared invalid on the ground that there is an earlier trade mark unless—
(a)the registration procedure for the earlier trade mark was completed within the period of five years ending with the date of the application for the declaration,
(b)the registration procedure for the earlier trade mark was not completed before that date, or
(c)the use conditions are met.
(2B)The use conditions are met if—
(a)within the period of five years ending with the date of the application for the declaration the earlier trade mark has been put to genuine use in the United Kingdom by the proprietor or with his consent in relation to the goods or services for which it is registered, or
(b)it has not been so used, but there are proper reasons for non-use.
(2C)For these purposes—
(a)use of a trade mark includes use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, and
(b)use in the United Kingdom includes affixing the trade mark to goods or to the packaging of goods in the United Kingdom solely for export purposes.
(2D)In relation to a Community trade mark, any reference in subsection (2B) or (2C) to the United Kingdom shall be construed as a reference to the European Community.
(2E)Where an earlier trade mark satisfies the use conditions in respect of some only of the goods or services for which it is registered, it shall be treated for the purposes of this section as if it were registered only in respect of those goods or services.]
(3)An application for a declaration of invalidity may be made by any person, and may be made either to the registrar or to the court, except that—
(a)if proceedings concerning the trade mark in question are pending in the court, the application must be made to the court; and
(b)if in any other case the application is made to the registrar, he may at any stage of the proceedings refer the application to the court.
(4)In the case of bad faith in the registration of a trade mark, the registrar himself may apply to the court for a declaration of the invalidity of the registration.
(5)Where the grounds of invalidity exist in respect of only some of the goods or services for which the trade mark is registered, the trade mark shall be declared invalid as regards those goods or services only.
(6)Where the registration of a trade mark is declared invalid to any extent, the registration shall to that extent be deemed never to have been made:
Provided that this shall not affect transactions past and closed.
Textual Amendments
F1S. 47(2A)-(2E) inserted (5.5.2004) by Trade Marks (Proof of Use, etc.) Regulations 2004 (S.I. 2004/946), regs. 1, 6 (with reg. 9)
Modifications etc. (not altering text)
C1S. 47 applied (with modifications) (1.4.1996) by S.I. 1996/714, art. 13
S. 47 applied (with modifications) (14.8.1996) by S.I. 1908, reg. 3(3)