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Trademarks - Trademark Invalidity - European Union

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-What is invalidation?

The European Union Intellectual Property Office (EUIPO) places invalidation or "declaration of invalidity" proceedings under the general heading "Cancellation" - which also covers applications for revocation of registered EUTMs (see EUTM Revocation chapter). 

Unlike EUTM opposition proceedings, grounds for invalidity can only arise after the mark has been registered and can be requested based on absolute or relative grounds.

 


-By when should the invalidity application be filed?

EUTMs

There is no time limit for filing a declaration of invalidity against EUTMs, but such a request cannot be filed against EUTM applications, only against registered EUTMs. 

International Registrations designating the EU (IRdEU) 

In the case of an IRdEU, invalidity can only be requested once the EU designation has been accepted by the EUIPO (second publication (Art. 190(2) EUTMR as of 01/10/2017). The EUIPO will examine the application for invalidity as if it were against a EUTM.

 


-What are absolute grounds?

Article 52 if the EUTM Regulation lays out the following absolute grounds for invalidity: 

  • Where the EUTM has been registered contrary to the provisions of Article 7;
    • It is not a mark pursuant to Article 4 EUTMR (as of 01/10/2017);
    • It is non-distinctive (i.e. devoid of distinctive character);
    • It is descriptive (i.e. it consists exclusively of signs or indications which may designate the kind, quality, quantity [...] or other characteristics of the goods or services);
    • It is generic (i.e. it consists exclusively of signs or indications which have become customary in the current language or in the bonafide and established practices of the trade);
    • It consists exclusively of a shape which results from the nature of the goods, or which is necessary to obtain a technical result, or which gives substantial value to the good;
    • It is contrary to public policy or to accepted principles of morality;
    • It is deceptive;
    • It is a specially protected emblem (incl. Art. 6ter of the Paris Convention for protection of IP);
    • It is a protected designation of origin, geographical origin, term for wine, traditional specialty or plant variety applicable to the EU / Member State; 
    • The application was made in bad faith.

If the absolute ground cited is non-distinctiveness, descriptiveness or genericism, then the mark will not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in the meantime (Art.59(2) EUTMR as of 01/10/20017).


-What are relative grounds?

Article 60 if the new EUTM Regulation  lays out the following relative grounds for invalidity:

  • Where there is an earlier trade mark (Art. 8(1) & (2) EUTMR)
  • In cases of unauthorised filing of marks by the proprietor's agent or representative (Art. 8(3) EUTMR). See also the option under the new EUTMR (Art. 21 as of 01/10/2017) to request an assignment of the trade mark.
  • Where there is an earlier non-registered trade mark or other sign used in the course of trade of more than mere local significance (Art. 8(4) EUTMR)
  • Where there is an earlier designation of origin or geographical indication (Art. 8(6) as of 01/10/2017)

These are the most common relative grounds, but a declaration for invalidity can also be requested based on another earlier right under EU legislation or national law governing its protection, in particular:

  •  a right to a name
  • a right of personal portrayal;
  • a copyright;
  • an industrial property right. 

 


-Partial invalidation

An EUTM registration may also be partially invalidated i.e. in relation to only some of the goods and/or services listed in the specification.


-What are the defences to an invalidation application?

If a claim is based on relative grounds, the registered proprietor may claim a defence of acquiescence under Art. 61 EUTMR (as of 01/10/2017), provided the following four conditions are satisfied: 

  • The later mark was registered; 
  • The application for the later mark was made in good faith; 
  • The later mark has been used in the relevant territory; and 
  • The proprietor of the earlier mark was aware of the registration and use of the later mark.

 


-How can you limit the list of goods/services to overcome the invalidation?

The contested EUTM may be surrendered in its entirety or partially surrendered to exclude the contested goods and services. However, despite any surrender, the EUIPO deems that the applicant has a legitimate interest in continuing the cancellation proceedings in order to obtain a decision on the substance - as a decision to invalidate would have an effect from the EUTM´s outset.

In practice, where the contested goods and services are surrendered the EUIPO will suspend the proceedings and give the applicant for a claim of invalidity the choice to continue with the proceedings or to agree to close them without a decision on substance.

 


-Who can file invalidation applications?

An application for declaration of invalidity based on absolute grounds can be filed by any natural or legal person or any group or body set up for the purpose of representing the interests of manufacturers, producers, suppliers or services, traders or consumers, which under the terms of the law governing it has the capacity in its own name to sue and be sued.

An application for invalidity based on relative grounds may only be filed by the owner of claimed earlier rights or by those entitled to exercise other rights under Article 46 EUTMR (as of 01/10/2017).



-Where do you file an invalidation application?

Applications for declaration of invalidity against EUTMs and IRdEUs can only be filed at the European Union Intellectual Property Office (EUIPO) - formerly named the Office for Harmonization of the Internal Market (OHIM).


-Do you need to do anything prior to filing?

The applicant for a declaration of invalidity may approach the EUTM owner in order to reach an amicable settlement before filing the request; however this will not affect a decision on costs taken by the EUIPO in subsequent invalidity proceedings against the EUTM between the parties.

 


-Formality requirements
  • Payment of the cancellation fee
  • Clear indication of the contested EUTM, EUTM owner and contested goods / services, 
  • Clear indication of the applicant for invalidity, claimed earlier rights and grounds
  • Arguments in support of the grounds need to be filed either with the action or later
  • Language selection / translations. The language of proceedings must be one of the five official languages of the EUIPO (EN, FR, DE, IT, ES) chosen from the two languages of the contested EUTM

 


-What is the invalidation procedure?
  • Admissibility check – The EUIPO will check formality requirements (see FAQ above & Rule 37 EUTMIR) and notify the EUTM owner of the application for invalidity. If the application passes admissibility, the pending action is also published in the Register to inform third parties.
  • Adversarial stage - This normally comprises two rounds of observations after which the adversarial part is closed and the EUIPO takes a decision which may include a decision on costs. The parties may jointly request an extension of time limits for observations before expiry of the time limit.
  • Continuation of proceedings - If a party fails to meet a time limit (other than for filing an appeal), but carries out the omitted act within two months of expiry of that time limit, it may request "continuation of proceedings" subject to payment of the related fee.
  • Suspension - A joint request to suspend proceedings during the adversarial stage will be granted by the EUIPO for a period of 6 months (as from 01/10/2017) regardless of the period requested. Either party may "opt-out" of the suspension. The EUIPO will also suspend invalidity proceedings if the validity of the contested EUTM is also being contested in a counterclaim before an EU trademark court. However proceedings may recommence if those EU trademark court proceedings are then suspended.


-How long do invalidation proceedings usually take?

This depends on whether any extension or stays have been applied for, and whether a hearing is requested (which practically never happens). However, the EUIPO publishes a Service Charter every quarter measuring its performance against three standards: timeliness, accessibility and quality of decisions. Cancellation handling time for at the end of 2016 was roughly 7 months.


-Can the decision be appealed?

Yes - all adversely affected parties have a right to appeal.


-What is the effect of a successful invalidation?

Where a EUTM is invalidated, the registration shall be deemed not to have had effect as from the EUTM's outset. 

If an IRdEU is totally or partially invalidated, the EUIPO will notify WIPO which will record the invalidation/revocation and publish it in the International Gazette.

 


Key Contacts

Andreas Renck

ANDREAS RENCK

Office Managing Partner, Alicante

+34 965 1383 00

EMAIL ANDREAS RENCK
Imogen Fowler

IMOGEN FOWLER

Partner, Alicante

+34 965 1383 00

EMAIL IMOGEN FOWLER

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