A prior European Union (EU) trademark registration or a national trademark registration inside the EU may be the subject of an application for invalidity or revocation.
The owner of a European Trademark may have his rights canceled under Article 81 of the European Union Trademark Regulation or his trademark be ruled invalid under Article 82. The revocation action and the action for invalidity are the names of these two procedures.
An application for a declaration of revocation or invalidity shall only be allowed where the EU trademark has been registered in the EU trademark register.
There is no time limit for applying for revocation or invalidity. However, if the owner of an earlier trademark tolerates the use of a later European Union trademark for five (5) consecutive years, he is no longer entitled to apply for a declaration of invalidity based on relative grounds of invalidity.
Difference between an action for invalidity and revocation of the trademark.
As the name suggests, trademark revocation means that the owner of the trademark loses his rights on it, which is similar to the revocation procedures under French law. The revocation of a European trademark takes effect from the date of the application for revocation.
A trademark is targeted by an action for a declaration of invalidity when the proprietor of an earlier trademark requests that a trademark be declared invalid. If the application for a declaration of invalidity of a European trademark is successful, the invalidity action results in the cancelation of the contested trademark from the European Union trademark register, with a retroactive effect.
What are the grounds for revocation that can be invoked?
According to article 58 of the European Union Trademark Regulation (EUTMR), there are three grounds for revocation:
- The European Union trademark has not been genuinely used for an uninterrupted period of 5 years;
- The European Union trademark has become, through the activity or inactivity of its proprietor, a common designation;
- The European Union trademark is likely to mislead the public as a result of its use by its owner or made with his consent
Regarding the common designation ground, it is worth noting that the applicant for the revocation of the European Union trademark must prove that the trademark targeted by this action has become the common use designation in the trade as a result of the activity or inactivity of the proprietor.
In other words, the applicant for revocation must prove that the mark has become the customary designation in the trade for the goods or services in question after the date of registration of the European trademark. However, arguing that the sign was the usual designation used in the trade of goods and services at the date of the application would only be relevant in the context of a revocation action.
What are the grounds for invalidity ?
First, invalidity is considered absolute when it is based on grounds relating to the intrinsic value of the mark. By contrast, invalidity is said to be relative when prior rights are at issue (e.g. trademark, company name, patronymic name, domain names, etc.).
Unlike absolute grounds for invalidity, which can be invoked by everyone, relative grounds for invalidity can only be invoked by a prior right holder.
According to article 59 of the European Union Trademark Regulation, a European Union trademark may be declared invalid in two cases:
- Where the European Union trademark has been registered despite the existence of an absolute ground for refusal, i.e. if it is devoid of the distinctive character or is descriptive;
- Where the applicant was acting in bad faith when filing the trademark application. This is the case if the applicant was pursuing unlawful purposes when filing the trademark application.
Furthermore, according to article 60 of the European Union Trademark Regulation, a European trademark may be declared invalid on the same grounds as those on which an opposition may be based and where there is another earlier right in a Member State to prohibit the use of the trademark concerned.
To conclude, the invalidity and revocation procedures of a European Union trademark allow its owner to act against an interfering registered trademark. Both procedures are in place to allow a trademark owner to protect and ensure that his or her trademark rights are respected.
Dreyfus Law firm remains at your disposal for any questions concerning the invalidity and revocation procedures before the EUIPO. We can assist you throughout the procedure to ensure the defense of your rights.
Le cabinet d’avocats Dreyfus reste à votre disposition pour toute question concernant les procédures de nullité et de déchéance devant l’EUIPO. Nous pouvons vous assister tout au long de la procédure pour assurer la défense de vos droits.