A mark that has been revoked can be cancelled

In T-Mobile (UK) Ltd v O2 Holdings Ltd (Case O-364-07), the appointed person has allowed O2 Holdings Ltd's appeal against a decision of the UK Trademark Registry finding that O2 could not pursue its invalidation actions against the BUSINESSZONE PLUS and BUSINESSZONE trademarks.

In May 1996 T-Mobile (UK) Ltd registered the trademarks BUSINESSZONE PLUS and BUSINESSZONE for goods in Class 9 and services in Class 38 of the Nice Classification. In February 2004 O2 applied to register the marks BUSINESS ZONES and BUSINESS ZONES FROM O2 for goods and services in the same classes. O2 also applied for the revocation of T-Mobile's marks on the grounds of non-use under Section 46 of the Trademarks Act 1994.

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 marks, the latter were accepted by the registry. T-Mobile then filed oppositions based on its marks (which, although revoked, were still registered at the time of O2's filing date). In response, O2 applied for the invalidation of T-Mobile's marks on the grounds that the revocation of T-Mobile's marks with effect only from March 2004 had left O2's marks vulnerable to opposition. The registry took the view that O2 could not 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 be an abuse of process. The hearing officer upheld that view.

T-Mobile subsequently withdrew its opposition to O2's trademark applications. In this hearing, the appointed person was required to determine the following issues:

• Given the withdrawal by T-Mobile of its opposition, was the appeal a purely theoretical one which was of solely academic interest and thus ought not to be heard?
  
  
• Does the phrase "the registration of a trademark may be declared invalid" in Section 47 of the act refer only to a registration that remained extant, active or live at the date of the application for invalidity?
  
  
• Was O2's application an abuse of process?

The appointed person allowed O2's appeal. She held as follows:

• Despite the withdrawal of T-Mobile's opposition, there remained a small risk - which could not be completely ignored - that T-Mobile would seek to rely on its marks to achieve some commercial end. Therefore, the invalidity proceedings could not be stigmatized as purely academic and the substance of the appeal should be dealt with.
  
  
• Since Section 47(1) concerned the validity of a trademark as at its application date, the phrase "the registration of a trademark" 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 Section 47 of the act was an abuse of process. The fact that a party had made an application for revocation of a trademark on the grounds of non-use under Section 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 Section 47, as making such an application was not subject to any statutory preconditions.

Jeremy Phillips, IP consultant to Olswang, London