Recent proceedings between T-Mobile (UK) Limited and O2 Holdings Limited have highlighted the relationship between revocation and invalidity of trade mark registrations, specifically: does one preclude the other?

O2 filed UK applications for Business Zones and Business Zones From O2 on February 26 2004. These were initially refused based on T-Mobile's earlier registrations for Businesszone and Businesszone Plus. O2 successfully revoked T-Mobile's marks for non-use with effect from March 5 2004. This was the earliest possible date for revocation as the registration procedure in each case was completed on March 5 1999. T-Mobile's marks remained validly registered however as between May 30 1996 (when they were filed) and March 4 2004, the date immediately preceding the effective date of revocation. As a result, they were – for some nine days and despite the revocation – obstacles to O2's applications.

The UK IP Office nevertheless accepted 02's applications. T-Mobile subsequently opposed based on its partially revoked marks as outlined above. O2 commenced invalidity proceedings to try and remove T-Mobile's registrations as obstacles to its own conflicting applications.

The UK IP Office refused to process the invalidity proceedings on the basis that T-Mobile's registrations had been revoked and that the invalidity actions, following upon successful revocation proceedings, might constitute abuse of process. O2 appealed to the Appointed Person.

The Appointed Person reviewed the earlier decision on three grounds:

1. On alleged lack of jurisdiction to entertain the invalidity proceedings as T-Mobile's marks had been revoked, it was held that since T-Mobile's registrations might still have an impact on O2's activities, the IP Office should be able to consider and rule on the invalidity proceedings – the real issue was not jurisdiction but whether the invalidity claim could be pursued in the particular circumstances, ie post-revocation.
2. On the statutory position and whether invalidity is possible only against registrations which are "extant/live", it was held that since invalidity and revocation are fundamentally different in their effects and effective dates, it would be inappropriate to construe the law as allowing invalidity against "live" marks only. It would also be unfair for a partially revoked registration to be a basis for opposition or infringement but not subject to counter-challenge by way of invalidity.
3. On alleged abuse of process, the two claims – revocation and invalidity – are again fundamentally different. In the particular circumstances, therefore, the invalidity claim was not an abuse of process.

This is a useful analysis of the interaction between revocation and invalidity. The two are often pursued together albeit necessarily as separate actions to achieve the same end – removal of an earlier obstacle. Technically though, their effects differ and, depending on the circumstances and subject to careful consideration, it may be acceptable to pursue revocation first with invalidity as a back-up. At the very least however (and granted this would not have helped O2 here), it is prudent to claim alternative revocation periods to remove, so far as possible, conflicts with earlier marks.

Abida Chaudri

Bristows
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