European Trademark Cancellation
- Conducting a preliminary assessment of the merits and risks of your case;
- Preparing and filing the application for cancellation with the EUIPO;
- Communicating with the EUIPO and the EUTM proprietor on your behalf;
- Submitting observations, evidence, and arguments in support of your case;
- Monitoring the progress and status of the cancellation proceedings;
- Advising you on the possible outcomes and strategies;
- Representing you before the Boards of Appeal and the courts, if necessary.
Revoking an EU trade mark can have serious consequences for your business and reputation. That is why you need to protect and maintain your rights by using your trade mark properly and effectively. If you need any assistance or advice on how to do so, please contact us today. We are a team of experienced and qualified European Trademark Attorneys who can help you with all aspects of EU trade mark law.
Are you worried about losing your EU trade mark rights? If you own an EU trade mark, you need to be aware of the situations that can lead to the revocation of your rights by the Office or by a court. In this article, we will explain the main grounds for revocation and how to avoid them.
Use it or lose it
One of the most common reasons for revoking an EU trade mark is the lack of genuine use. If you do not use your trade mark in the Union for a continuous period of five years, you risk losing your rights. This means that you have to use your trade mark in relation to the goods or services that you registered it for, and in a way that is consistent with its function as a trade mark. You also have to show that there are no proper reasons for non-use, such as legal obstacles, market conditions, or health issues.
However, there is a grace period that allows you to start or resume using your trade mark after the five-year period has expired, without losing your rights. This grace period lasts until someone files an application or a counterclaim for revocation against your trade mark. But be careful: if you start or resume using your trade mark only three months before the application or counterclaim is filed, and you did so because you knew about it, your use will be disregarded.
Don’t let it become generic
Another reason for revoking an EU trade mark is when it becomes the common name for a product or service that it is registered for. This can happen if you do not use your trade mark properly, or if you do not prevent others from using it as a generic term.
To avoid this, you have to use your trade mark as an adjective, not as a noun or a verb. You also have to use the appropriate symbols, such as ® or ™, to indicate that it is a registered trade mark. Moreover, you have to monitor the market and take action against any unauthorized or improper use of your trade mark by third parties.
Don’t mislead the public
A third reason for revoking an EU trade mark is when it becomes misleading. This can happen if you use your trade mark in a way that creates confusion about the nature, quality, or geographical origin of your goods or services.
To avoid this, you have to use your trade mark in accordance with its original meaning and function. You also have to respect the rules and regulations that apply to your goods or services, especially those related to quality standards and geographical indications. Furthermore, you have to ensure that your trade mark does not infringe on the rights of others, such as prior trade marks or protected names.
Partial revocation
It is important to note that revocation can apply to only some of the goods or services that your EU trade mark is registered for. This means that you can keep your rights for the goods or services that are not affected by the grounds for revocation.
Therefore, it is advisable to register your EU trade mark for the goods or services that you actually use or intend to use in the near future. You should also review your portfolio regularly and update it according to your business needs and market changes.
Trademark Invalidity
Do you want to protect your brand identity in the EU market? If you do, you need to register your trade mark as an EU trade mark. An EU trade mark is a sign that distinguishes your goods or services from those of other businesses. It gives you exclusive rights to use, exploit, and defend your trade mark in all 27 Member States of the European Union.
However, registering an EU trade mark is not enough. You also need to make sure that your trade mark is valid and enforceable. Otherwise, you may face the risk of having your trade mark declared invalid by the Office or by a court. In this article, we will explain the main reasons why an EU trade mark can be declared invalid and how to prevent them.
Absolute grounds for invalidity
An EU trade mark can be declared invalid on absolute grounds if it does not meet the basic requirements for registration.
The trade mark must be distinctive, meaning that it must be capable of identifying your goods or services and distinguishing them from those of other businesses. The trade mark must not be descriptive, meaning that it must not consist of words or signs that describe the characteristics, quality, or origin of your goods or services. The trade mark must not be generic, meaning that it must not consist of words or signs that are commonly used in the trade for your goods or services.
The trade mark must not be contrary to public policy or accepted principles of morality, meaning that it must not offend or deceive the public or violate any laws or regulations. If your trade mark is registered despite being in breach of any of these requirements, it can be challenged and declared invalid by anyone who has a legitimate interest. However, there is an exception: if your trade mark has acquired a distinctive character through use after registration, it can no longer be declared invalid on the grounds of being descriptive, generic, or non-distinctive.
Relative grounds for invalidity
An EU trade mark can also be declared invalid on relative grounds if it conflicts with an earlier right that belongs to someone else.
An earlier trade mark that is identical or similar to your trade mark and covers identical or similar goods or services, which may cause confusion among consumers.
An earlier trade mark that has a reputation in the EU and is identical or similar to your trade mark, which may take unfair advantage of or cause detriment to the distinctive character or reputation of the earlier trade mark.
An earlier trade mark that is well known in a Member State and is identical or similar to your trade mark, which may indicate a connection between your goods or services and the owner of the earlier trade mark or damage their interests.
An earlier right that is not a trade mark but has a similar function, such as a name, a portrait, a copyright, an industrial property right, a designation of origin, or a geographical indication.
If your trade mark is registered despite infringing any of these earlier rights, it can be challenged and declared invalid by the owner of the earlier right. However, there are some exceptions: if the owner of the earlier right consents to the registration of your trade mark before the challenge is filed, or if they have previously challenged your trade mark on another basis and failed, they cannot challenge your trade mark again.
Partial invalidity
It is important to note that invalidity can apply to only some of the goods or services that your EU trade mark is registered for. This means that you can keep your rights for the goods or services that are not affected by the grounds for invalidity.
Therefore, it is advisable to register your EU trade mark for the goods or services that you actually use or intend to use in the near future. You should also review your portfolio regularly and update it according to your business needs and market changes.
Conclusion
Invalidating an EU trade mark can have serious consequences for your business and reputation. That is why you need to ensure and maintain the validity and enforceability of your trade mark by complying with the requirements and respecting the rights of others. If you need any assistance or advice on how to do so, please contact us today. We are a team of experienced and qualified European Trademark Attorneys who can help you with all aspects of EU trade mark law.