So you CAN cancel a mark that's been revoked

The decision of Appointed Person Amanda Michaels back in December 2007 in T-Mobile (UK) Ltd v O2 Holdings Ltd is now available online from the UKIPO website. This is one of those technical decisions that excite lawyers - and academics - more than consumers, but here goes anyway ...

This was the hearing of an appeal by O2 against a decision of the UK Trade Mark Registry that O2 could not pursue its invalidation actions against the BUSINESSZONE PLUS and BUSINESSZONE trade marks, which were registered by T-Mobile in May 1996 for goods in Class 9 and services in Class 38. Why did O2 want these marks out of the way? This was because, in February 2004, O2 applied to register its own marks BUSINESS ZONES and BUSINESS ZONES FROM O2, by sheer coincidence also for goods and services in the same classes. For good measure, O2 applied at the same time for revocation of the T-Mobile marks for non-use under the Trade Marks Act 1994 s.46.

The registrar revoked both T-Mobile registrations with effect from March 2004. Despite the slight overlap of dates between the revoked marks and O2's applied-for marks, the latter were accepted by the registry. T-Mobile then filed oppositions based on its marks which, while now revoked, were still registered at the time of 02's filing date. In response, O2 filed requests for the invalidation of the T-Mobile marks on the basis that the revocation of T-Mobile's marks only with effect from March 2004 had left O2's marks vulnerable to opposition. The registry took the view that it was not possible to pursue the invalidity action because the revocation of T-Mobile's marks meant that they no longer existed on the register. The registry was also concerned that an application for invalidation might also be an abuse of process. The hearing officer upheld that view. T-Mobile subsequently withdrew its opposition to O2's trade mark applications.

In this hearing the Appointed Person was required to determin whether (i) given the withdrawal by T-Mobile of it opposition, was the appeal a purely theoretical one which was of solely academic interest and thus ought not to be heard? (ii) could a revoked mark be invalidated and did the phrase "the registration of a trade mark may be declared invalid" at the beginning of s.47 of the Trade Marks Act 1994 refer only to a registration that remained extant, active or live at the date of the application for invalidity? (iii) was O2's application an abuse of process?

Amanda Michaels allowed O2's appeal. In her view,

* despite the withdrawal of T-Mobile's opposition, there remained a very small risk - which could not be completely ignored - that T-Mobile would seek to rely on its marks to achieve some commercial end. This being so, the invalidity proceedings could not be stigmatised as purely academic and the substance of the appeal should thus be dealt with.

* Since section 47(1) concerned the validity of a trade mark as at its application date, the phrase "the registration of a trade mark" in that section should be construed as referring to the process of registration, or the initial registration, of the mark. It would be inappropriate to construe those words as applying only to "live" marks which had not been revoked, surrendered or abandoned by not being renewed.

* The hearing officer was wrong to have found that O2's application under s.47 of the Act was an abuse of process. The fact that a party had made an application for revocation of a trade mark on the grounds of non-use under s.46 of the Act would not as a matter of course preclude that party from subsequently applying for a declaration of invalidity of the same mark under s.47 of the Act, as making such an application was not subject to any statutory preconditions.

The IPKat really enjoyed this one but wishes he had already used these facts as the basis for an exam question. Merpel says, these marks look horribly descriptive/distinctive for lots of things in Classes 9 and 38, but there shouldn't be any problem registering them for lollypops.

T-Mobile here
T-shirts here
T-steak here