IP-2023-000120 - [2025] EWHC 1793 (IPEC)

For the purposes of the revocation/non-use defences the Defendants rely on two separate five-year periods.

It would be for the Trade Mark proprietor to prove use. Although there was some limited evidence of use by the Restored Company (and NHBCL with the Restored Company’s consent) prior to the dissolution there cannot have been any use of the Trade Mark by the proprietor or with its consent from 11 April 2018 to 11 October 2023 for the reasons set out above.

If the Trade Mark had not expired it would have revested in the Restored Company on restoration. In those circumstances use by the Restored Company or with its consent could have recommenced on 12 October 2023.

The counterclaim for revocation for non-use was filed on 9 January 2024 before the three-month period for resuming use had expired. The timing means that resumption of use after 11 October 2023 would not overcome non-use prior to 11 October 2023. The Claimants have to therefore rely on preparation for resumption of use under s.46(3) TMA 1994.

In opening NHBCL argued that the Application made by NC-S showed an intention to resume use from February 2023. However, NC-S was not the proprietor of the Trade Mark and cannot have been preparing to resume use with the consent of the proprietor as that was the Crown at the time. Dr Muir Wood argues that the Application was not evidence of preparation to resume use on the part of either the Restored Company or NHBCL. Given my findings resumption of use by NHBCL would not assist. Further the purpose of the Application as set out in the evidence in support of it and the correspondence with the BVD was to transfer the Trade Mark from the Restored Company to NC-S for her to use it for her business as a sole trader. The purpose of the Application was not for the proprietor of the Trade Mark to prepare to resume its use but to enable the Trade Mark to be transferred.

NHBCL relies on use by it in the period between the dissolution and restoration as genuine use for these purposes for both five-year periods. This was based in part on its assertion that it had a beneficial interest in the Trade Mark as a consequence of its use of it. For the reasons set out above it did not. It was not using the Trade Mark with the authority of the proprietor after 10 April 2018 and prior to its expiry on 2 May 2023. Even if it any of this were to amount to preparation for resumption of use, the Trade Mark then expired on 2 May 2023 and was not validly renewed for the reasons set out above.

Consequently, even if NHBCL were now the proprietor of a relevant trade mark it was not using it in the period of the dissolution with the proprietor’s consent.

There can have been no genuine use of the Trade Mark in the first 5-year period the Defendants relied on. Although the Trade Mark had not expired it was vested in the Crown during that entire period.

If NHBCL had had some proper basis for seeking a vesting order it could have done so. But simply using the Trade Mark without the permission, knowledge or consent of the proprietor does not amount to use for the purposes of s.46 TMA 1994.

Had the Trade Mark not subsequently expired before the Restored Company was restored then the Trade Mark would have vested back in the Restored Company. Subject to the matters raised above the Restored Company (not NHBCL) may then have been able to seek to renew or restore the Trade Mark and/or seek appropriate directions from the court to vary the restoration order. It may even be that the fiction created by the restoration of the Restored Company would have provided an argument that the Restored Company would then have been able to rely on the use of NHBCL in the period of its dissolution. But the Trade Mark did expire, no application to renew or restore was made and no other directions were sought by the Restored Company from the court either as part of the Application or subsequently. And none of this would have helped NHBCL which is relying on its use of the Trade Mark and the Renewed Trade Mark to defeat the revocation claim.

Finally, there could not have been any genuine use after 2 May 2023 when the Trade Mark expired. The second five-year period relied on for revocation for non-use appears to be at least as strong as the first period.

On 12 October 2023 after the expiry of the second five-year period relied on the Restored Company at best, had an entitlement to seek to restore or renew the expired Trade Mark and to seek to vary the restoration order, as necessary.

Since the revocation for non-use relies on the dissolution of the Restored Company, the answer would be the same even if I were wrong about the effect of the dissolution on the renewal of the Trade Mark.

The Defendants would therefore be entitled to revocation for non-use for each of the five-year periods in any event.