IP-2022-000036 - [2023] EWHC 2005 (IPEC)

The 2007 Order provides in relevant part:

“2.

The registrar shall not refuse to register a trade mark on a ground mentioned in section 5 of the Trade Marks Act 1994 (relative grounds for refusal) unless objection on that ground is raised in opposition proceedings by the proprietor of the earlier trade mark or other earlier right.

…

5.

(1) Only the persons specified in paragraph (2) may make an application for a declaration of invalidity on the grounds in section 47(2) of the Trade Marks Act 1994 (relative grounds).

(2)

Those persons are—

(a)

in the case of an application on the ground in section 47(2)(a) of that Act, the proprietor or a licensee of the earlier trade mark or, in the case of an earlier collective mark or certification mark, the proprietor or an authorised user of such collective mark or certification mark; and

(b)

in the case of an application on the ground in section 47(2)(b) of that Act, the proprietor of the earlier right.

(3)

So much of section 47(3) of that Act as provides that any person may make an application for a declaration of invalidity shall have effect subject to this article.”

Arts. 2 and 5 of the 2007 Order taken together are not as clear as they might be regarding proprietor and/or licensee, but leaving aside collective and certification marks I take them to mean that where the party seeking a declaration of invalidity of a later trade mark pursuant to s.47(2)(a) relies on the registration of an earlier trade mark, that party must be either the proprietor or a licensee of the earlier trade mark. That was the interpretation adopted by the parties at trial.