ATLANTIC SPA: Late Renewal, Non-Use Revocation and Unrecorded Assignment
Rosslare Seaweed Ltd owns Irish trade mark No. 123456 ATLANTIC SPA, registered 15 March 2014 in Class 3 for 'cosmetics' and Class 5 for 'dietary supplements'. The renewal date was 15 March 2024. The company paid the renewal fee and surcharge on 10 September 2024, within the six-month grace period. On 1 July 2024 Celtic Wellness Ltd applied to revoke the mark for non-use. Rosslare used ATLANTIC SPA on seaweed bath salts in Class 3 until December 2021, then stopped; it licensed a small producer in 2022, but the licensee sold under ATLANTIC BATH; there has been no use in Class 5. On 1 August 2024 Rosslare assigned the mark to Atlantic Spa Brands Ltd by a signed written assignment, but the assignment has not been recorded. Celtic Wellness says the mark should be removed for the whole specification. Atlantic Spa Brands Ltd wants to defend the revocation and needs to know who is the proprietor for the proceedings.
1. What is the status of the registration after the renewal payment on 10 September 2024?
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The renewal date was 15 March 2024. The registration is subject to a six-month grace period, which ends on 15 September 2024. Payment on 10 September 2024 is within the grace period, so the renewal is effective. The registration is treated as renewed from the expiry date, 15 March 2024; there is no gap in protection. The surcharge was correctly payable because the payment was late.
The revocation application filed on 1 July 2024 was filed while the registration was still within the grace period and capable of renewal. The fact that renewal was later paid does not invalidate the revocation application. If the renewal had not been paid by 15 September 2024, the registration would have been removed and the revocation application would have had no mark to revoke. On these facts, the mark remains on the register and the revocation must be defended on the merits.
The proprietor should obtain a receipt and a register extract confirming the renewal and the next renewal date (15 March 2034). It should also check that the renewal was recorded against the correct registration number and classes.
2. Which goods are vulnerable to revocation, and can the licensee's use of ATLANTIC BATH count as use of ATLANTIC SPA?
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Revocation for non-use requires continuous non-use for five years. The relevant five-year period ends on the date of the revocation application, 1 July 2024.
Class 5 - dietary supplements. There has been no use at all. More than five years have passed since registration. The mark is vulnerable to revocation for the whole of Class 5. There are no proper reasons for non-use on the facts.
Class 3 - cosmetics. The mark was used on seaweed bath salts until December 2021. Five years had not elapsed by 1 July 2024, so the mark is not vulnerable for bath salts. However, the specification is broader than bath salts. If there was no use for other cosmetics, the registration may be partially revoked for cosmetics other than bath salts. The Controller will ask whether bath salts are a separable subcategory; they probably are.
Use under ATLANTIC BATH. Use of a mark in a form differing in elements that do not alter the distinctive character can still count. The distinctive element of ATLANTIC SPA is 'ATLANTIC'; 'SPA' is descriptive for bath products. Replacing 'SPA' with 'BATH' may not alter the distinctive character. There is therefore a arguable case that the licensee's use counts. The use must be with the proprietor's consent, which a licence can show. If it counts, use continued into 2022; if it does not, the last use was December 2021. Either way, five years had not elapsed for Class 3 by July 2024.
The likely outcome is revocation of Class 5 and partial revocation or restriction of Class 3 to seaweed bath salts. Celtic Wellness's claim that the whole mark should be removed is too broad.
3. What are the consequences of the unrecorded assignment, and who should defend the revocation?
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An assignment of a registered trade mark must be in writing and signed by or on behalf of the assignor. The facts say the assignment was signed and written, so it is likely effective between Rosslare Seaweed Ltd and Atlantic Spa Brands Ltd. However, it has not been recorded. The register still shows Rosslare as proprietor. Third parties are entitled to rely on the register, and an unrecorded assignment may be ineffective against a person who acquires a conflicting interest in good faith.
Atlantic Spa Brands Ltd should immediately apply to record the assignment. The application should include the signed assignment, the prescribed form and the fee. Once recorded, it should apply to the Controller to be substituted for Rosslare in the revocation proceedings. The Controller has power to allow the true proprietor to defend. If substitution is delayed, Rosslare can file the counterstatement and evidence, but it must explain the assignment and should not take substantive steps that prejudice the new owner.
The new owner should also check the chain of title: was the assignment signed by a duly authorised director? Does it cover both classes? If the assignment is invalid, the revocation defence may fail for lack of standing. The practical steps are: record the assignment, notify Celtic Wellness of the assignment, apply for substitution, and file evidence on use. Costs should be sought against Celtic Wellness if the revocation is largely unsuccessful.