Oliver Williams, Solicitor, and Stephen Baker, Partner, of our Dispute Resolution team examine how Operation Bluebird is attempting to acquire the Twitter trade mark and what lessons UK businesses can learn about revoking registered trade marks.
X Corp’s 2023 rebranding from Twitter to X was controversial, with some people considering the company’s change to be wasting its iconic blue bird branding. A US startup, aptly named Operation Bluebird, is now seeking to revive the Twitter brand for itself, arguing that X Corp has abandoned the trade marks associated with it.
Whilst the dispute is being fought in the United States, it highlights an important issue for UK businesses: when can a registered trade mark be revoked for non-use and adopted by someone else?
Can another business claim the Twitter trade Mark?
Operation Bluebird has filed a petition with the United States Patent and Trademark Office seeking the cancellation of Twitter-related trade marks and registration of those marks in its own name. This type of challenge is broadly comparable to a trade mark revocation action for non-use in the UK. It contends that X Corp has abandoned the Twitter brand by ceasing to use it and by demonstrating a clear intention not to resume that use.
The petition relies on X Corp’s removal of Twitter’s name, logo, terminology and branding across its platform as evidence of abandonment. Particular emphasis has been placed on the retirement of distinctive terms such as “Tweet”, which have been replaced with more generic social media terminology such as “Post”.
X Corp counters that for someone else to use the ‘Twitter’ brand would mislead the public and impact X’s business, on the grounds that the brand is still strongly associated with X. They also are likely to counter Operation Bluebird’s claims of abandonment.
The timing of the claim is significant. X Corp launched its rebrand in 2023 and, under US trade mark law, three consecutive years of non-use can constitute prima facie evidence of abandonment.
Whether Operation Bluebird can succeed and revive the nostalgic ‘Twitter’ brand will heavily depend on the evidence both sides can produce as well as US case precedent.
How can a trade mark be revoked for non-use in the UK?
The equivalent action to an ‘abandonment’ claim in the US is a ‘revocation’ claim in the UK, and the relevant period of time is five years rather than three.
Under section 46 of the Trade Marks Act 1994, a registered trade mark may be revoked in a number of circumstances, including where:
1. A trade mark has not been put to genuine use within five years following completion of the registration procedure.
2. A trade mark has not been used for an uninterrupted period of five years and there is no proper reason for that non-use.
The manner in which the proprietor has used the trade mark has caused it to become misleading, particularly regarding the nature, quality or geographical origin of the goods or services concerned.
In practice, revocation actions are most commonly brought on the basis of five years’ continuous non-use. It is comparatively rare for a proprietor to register a trade mark and then never use it during the initial five-year period following registration.
How do you challenge dormant trade mark registrations?
To revoke a UK trade mark for non-use, an applicant must establish that the registered proprietor has not genuinely used the mark in relation to the goods or services for which it is registered. Depending on the evidence, revocation may be sought in respect of some or all of the registered classes.
A successful application will usually require evidence showing when use of the trade mark ceased, that the period of non-use was uninterrupted for at least five years, and that the proprietor had no proper reason for that non-use.
The process begins with the filing of a trade mark revocation application at the UK Intellectual Property Office (UKIPO), together with the prescribed official fee. The UKIPO will then notify the trade mark proprietor and provide them with an opportunity to defend the registration of their mark.
Where a defence is filed, both parties will have the opportunity to submit evidence and legal arguments. The UKIPO will then determine whether the registration should remain in force, be revoked entirely, or be revoked only in relation to certain goods or services. The trade mark register will be amended accordingly.
Trade mark proprietors frequently seek to justify periods of non-use by relying on a “proper reason” defence. Whether the explanation is sufficient will depend on the particular facts of the case and the applicable case law. As a result, revocation proceedings can quickly become technical and evidence-heavy, making specialist legal advice particularly valuable.
How we can help
Revocation proceedings can present valuable commercial opportunities, whether you are seeking to clear the way for a new brand or defend an existing trade mark portfolio. Equally, a poorly prepared application can result in unnecessary costs and an unsuccessful outcome.
Our specialist intellectual property lawyers advise businesses on all aspects of trade mark disputes, including revocation applications, defending challenges to registered rights, settlement negotiations and wider brand protection strategies. If you would like advice on revoking a trade mark or responding to a revocation claim, please contact a member of our Dispute Resolution team.
