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Trademarks - Trademark Revocation - European Union

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-What is revocation?

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

Unlike EUTM opposition proceedings, grounds for revocation can only arise after the mark has been registered.



-On what grounds may a revocation be based?

The grounds for revocation (Art.58 EUTMR  as of 01/10/2017) are: 

  • No genuine use during a continuous period of five years (non-use)
  • The EUTM has become generic due to acts/inactivity of its proprietor (Generic use)
  • The EUTM has become misleading due to the use made by its proprietor or with its consent (improper use

"Non-use"

Genuine use means actual use of the trade mark by the proprietor or with the consent of the proprietor. The use cannot be token, i.e. it must serve a commercial purpose. However, there is no decisive threshold. 

An application for non-use cannot be made earlier than five years after registration or - for an IR designating the EU (IRdEU) – after the second publication.

Further, a trade mark owner does not need to make continuous use of its mark(s). Periods of non-use lasting less than five years are perfectly acceptable. So, for example, a trade mark owner could:  

  • register a mark, 
  • use it for two years, 
  • stop using it for three years, 
  • recommence use for three years, 
  • stop using it for four years,
  • recommence use for two years, 

et cetera.

It is only where the owner does not use the mark for a continuous five-year period that revocation for non-use can be applied for.

"Generic use"

Generic use means the mark has become the common name in trade for a good or service. Examples of marks which have become generic are ESCALATOR and LINOLEUM. 

A proprietor should take steps to ensure a mark does not become generic, for example, by: 

  • Differentiating the mark from any accompanying wording e.g. by using capital letters or inverted commas Only using the mark as an adjective, never as a noun or verb
  • Using the symbols TM (for unregistered marks) or ® (for registered marks) 
  • Dealing with any misuse of the mark promptly and firmly 

"Improper use"

Improper use arises where the mark, in consequence of the use made of it by the owner or with his consent, is liable to mislead the public, particularly as to the nature, quality or geographical origin of the relevant goods or services. 

Improper use is a question of fact. It must be determined whether the mark as used is liable to mislead the average, reasonably informed and reasonably observant, consumer of the goods or services in question.

 



-Partial revocation

A registration may be revoked in its entirety. Alternatively, it may be partially revoked i.e. in relation to only some of the goods and/or services listed in the specification.


-What are the defences to a revocation application?

In non-use cases, revocation can be avoided where there are "proper reasons" for not having used the mark. Such reasons must be outside the control of the trade mark owner, for example where there are export or legal restrictions. Further, use of a mark in a slightly different form to the one that appears on the register is acceptable if the amended form is such that the distinctive character of the mark has not been altered. Therefore minor variations may be defensible. 


-Who can file revocation applications?

An application for revocation 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.


-Where do you file a revocation application?

Applications for revocation of EUTMs and International Registrations designating the EU (IRdEU) can 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 revocation 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 revocation proceedings against the EUTM between the parties.

The applicant will not be prejudiced by putting the trade mark owner on notice of a potential revocation action. Pursuant to (Article 58(1)(a) EUTMR as of 01/10/2017), a revocation action may still be filed within three months of a trade mark owner or authorised licensee recommencing use if the EUTM proprietor became aware that the request for revocation might be filed. 

 


- Formality requirements

 

  • Payment of the cancellation fee
  • The contested EUTM or IRdEU must be registered (for 5 year in the case of revocation for non-use) and not surrendered, expired etc.
  • There is no previous EUIPO or EU trademark court decision involving the same parties, grounds, rights or earlier rights that could have been cited
  • 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 revocation procedure?

 

  • Admissibility check – The EUIPO will check formality requirements (see FAQ above & Rule 37 EUTMIR) and notify the EUTM owner of the application for revocation. 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 revocation 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 revocation 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 revocation?

If a EUTM registration is revoked, the revocation will have effect as from the date of the application for revocation. An earlier date may be fixed by the EUIPO if requested by one of the parties on the condition that this party can demonstrate a "legitimate interest" to do so (Article 62(1) EUTMR as of 01/10/2017).


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