Administrative revocation at a crossroads - a look back
Hanna Lillý Karlsdóttir
According to the Trade Mark Act No.45/1997, anyone with legitimate interests at stake may request that the Icelandic Intellectual Property Office invalidate the registration of a trademark, provided that certain requirements are met.
This remedy, which was introduced into law in 2012 and is provided for in Article 30a of the Trade Mark Act, was initially referred to as “administrative revocation” but is now generally just called “revocation”. A bill to amend the Trade Mark Act containing various changes, including as regards the provisions on revocation, was recently approved by the Icelandic parliament, Alþingi. In light of this,it might be appropriate to take a look back.
Until 2012, a trademark registration could only be revoked by a court decision, but the 2012 amendment also authorised the Intellectual Property Office to revoke trademark registrations, including in cases where a trademark has not been used and when the registration is considered to violate the provisions of the Trade Mark Act. Until now, no distinction has been made between invalidation and revocation. As previously noted, the term “revocation” has been used for all instances when a mark has been revoked, regardless of the basis.
The notes accompanying the 2012 amendment bill included reasoning for allowing the Intellectual Property Office to revoke registrations, referring to the main purpose of the use requirement, i.e. to prevent a large number of marks that are not used by the proprietor but are only registered to prevent use by a competitor. The notes stated that the provisions on use requirement had limited significance if there was not a simpler and less expensive way of having a registration revoked than legal proceedings. Given that the number of registered marks had increased, both in Iceland and internationally, and the Trade Mark Register contained a number of registered marks not in use in Iceland, the aim in 2012 was to facilitate the revocation of registrations so the Register would not contain a large number of registered marks that were not in use.
I am not aware of any legal proceedings to contest a revocation, but a judgement in 2009, concerning non-use and proof of use, set a precedent, cf. Supreme Court judgement no. 437/2008 on the trademark ICEAVIA (where the term “invalidation” is used throughout). The fact that there are few court cases concerning the revocation of trademarks indicates that there was a real need for a simpler and swifter solution, as few people were ready to pay the costs of legal proceedings.
The amended act entered into force in mid-2012 and only four requests were received that year. The number of cases increased in the following years, with 7-14 requests for revocation being received each year. 2018 was an exception, with 29 requests received. By the end of 2019, more than 90 requests for revocation had been received, of which the Intellectual Property Office had made decisions on over 60. One case was dismissed and in a few instances, requests have been withdrawn.
The Intellectual Property Office has revoked a mark, in part or in full, in approximately half of the cases processed by the Office. This is because the grounds for revoking a mark is usually non-use and the registered proprietor has not presented a defence. This is in line with the aforementioned Supreme Court judgement, where it was determined that the proprietor of a registered mark has the burden of proof to demonstrate use of the mark.
Although non-use is the most common grounds for revocation, requests for revocation have also been based on likelihood of confusion with a previous registered or unregistered mark, a claim of a mark having been registered in bad faith, and that a mark had lost its distinctive character. Requests for revocation have also been based on a mark having lacked distinctive character upon registration.
Several of the ISIPO’s decisions have been referred to the Board of Appeal for Industrial Property Rights, where particular questions have been considered,e.g. how to interpret the concept of legitimate interests and the extent to which proof of such interests must be provided. The Board of Appeal has interpreted the provision on revocation to mean that it only applies to factors pertaining to a mark’s registration but not procedures relating to other factors, such as renewal.
Proposed changes
The newly approved amendment bill aims to clarify the framework around this process. It is expected that the term revocation will not continue to be used as a blanket term but rather be divided into invalidation, i.e. invalidation on the basis of a mark having been registered in violation of the provisions of trademark law, and revocation, i.e.revocation on grounds such as non-use.
Another change worth noting is that the requestor will not be required to have legitimate interests in having a mark invalidated or revoked, meaning that anyone can apply for invalidation or revocation, such as is the case with opposition to a registration. The notes to the amendment bill justify this change by pointing out that there are no strict requirements for being a party to invalidation or revocation proceedings in the Nordic countries, as well as pointing out that an application for revocation is often the only possible means to have a trademark revoked, e.g. in cases where a trademark has not been in use. The aim is also to clarify the different legal implications of invalidation and revocation.
The number of requests for revocation that the Office has received since 2012 shows that there was a need to simplify the revocation proceedings. As noted, most requests for revocation are made on the grounds of non-use, and such cases frequently arise when the requestor applied for registration of a mark and was refused for reasons that include the likelihood of confusion with a previously registered mark. The number of cases based on these grounds indicates that the remedy was necessary.
Decisions are published and accessible to all on the Office’s website, www.hugverk.is. Beginning in early 2019, explanatory statements from the parties to the case are published along with the Office’s decisions to facilitate the proceedings and maintain transparency.This also enables others to understand the arguments of parties to such cases,which can be useful for those who wish to request a revocation of a mark and do so in the proper manner.
As for the amendment bill, it is clear that considerable changes are forthcoming regarding the procedure that has until now been called administrative revocation. The content of the amendment bill can be viewed here.
