Trademark Cancellation

Revocation of a trademark for non-use and invalidity

The cancellation of a trademark in proceedings before the trademark offices

Revocation proceedings and invalidity proceedings before the EUIPO and the DPMA

Even after the opposition period has expired, trademarks can be cancelled in proceedings before the offices. The EU Trademark Regulation (UMV) and the German Trademark Law (MarkenG) know two types of cancellation proceedings: Revocation and Invalidity. The most important case of revocation is the lack of use that preserves the right. A trademark is declared invalid if it is opposed by absolute grounds for refusal or relative grounds for refusal. For European Union trademarks, an application for cancellation must be filed with the European Intellectual Property Office (EUIPO) in Alicante. Cancellation of a German trademark is requested at the German Patent and Trademark Office (DPMA).

 

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Attorney for trademark law Thomas Seifried has over 20 years of experience in trademark law and has also been a specialist attorney for intellectual property law ("Fachanwalt fuer gewerblichen Rechzsschutz") since 2007. He is an author of specialized books and has conducted many successful proceedings before courts and the trademark offices.

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Example of cancellation of a trademark due to bad faith: DPMA declares trademark "Icebound", trademark "risa" and trademark "Isha" invalid due to bad faith application

One of our clients was sued in several court proceedings (preliminary injunction proceedings and proceedings on the merits) by the owner of the trademarks "Icebound", "risa" and "Isha" for alleged trademark infringements. We then applied for the word mark 30 2015 051 635 "Icebound", the word mark 30 2015 051 935 "risa" and the word mark 30 2015 048 636 "Isha" to be declared invalid and canceled due to bad faith trademark registration. Essentially, we argued that the trademark owner, a micro-corporation, had provided contradictory information on the use and alleged licensing of the trademarks and that there was no reason to apply for so many trademarks. Furthermore, the warning and litigation behavior was disproportionate to the small size of the trademark owner. Rather, the warning business would represent the trademark owner's actual business. The DPMA ruled in our favor: The trademarks "Icebound" and "risa" were declared invalid by decisions of the DPMA dated 13.10.2021. The trademark "Isha" was declared invalid by decision of the DPMA of 19.09.2023 due to bad faith trademark application. The decisions are not yet final.

DOWNLOAD: Decision of DPMA vom 13.10.2021 - Invalidity of the trademark 30 2015 051 935 "risa"

DOWNLOAD: Beschluss des DPMA vom 13.10.2021 - Invalidity of the trademark 30 2015 051 635 "Icebound"

DOWNLOAD: Beschluss des DPMA vom 19.09.2023 - Invalidity of the trademark 30 2015 048 636 "Isha"

Recovery claims of those sued by the owner of the trademarks "Icebound", "risa" and "Isha

Whoever has been warned by the owner of a trademark registered in bad faith and has paid warning costs and license fees may be entitled to repayment claims against this trademark owner pursuant to § 823 I BGB (German Civil Code) due to interference with the established and exercised business or pursuant to § 812 I BGB in connection with § 52 II, III MarkenG (see § 52 II, III MarkenG (see Regional Court Frankfurt am Main of 16.01.2020, Ref. 2-03 O 214/19 - You & Me, contested by us).

DOWNLOAD: Decision of Regional Court of Frankfurt am Main v. 16.01.2020, Az. 2-03 O 214/17 – You & Me

Cancellation of a trademark due to revocation

Cancellation of an EU trademark due to revocation (non-use)

An EU trademark is revoked upon request if the trademark is not put to genuine use within five years of its registration or if use is interrupted for more than five years. Revocation for non-use is practically the most important and frequent reason for requesting revocation of a trademark. An EU trademark may also be revoked if the trademark has become the common name for the goods or services for which it is registered or if the trademark has become misleading for the goods or a service for which it is registered.

Cancellation of a German trademark due to revocation (non-use)

In the case of an application for revocation of a German trademark due to non-use, the relevant period of non-use does not begin with the registration, but only as soon as no further opposition can be filed against the trademark (Sec. 49 I 1 MarkenG). The period of non-use thus begins after expiry of the three-month opposition period following publication of the trademark in the trademark register.

Cancellation of a trademark due to invalidity

Absolute and relative grounds for refusal

There are absolute and relative grounds for invalidity. Absolute grounds for invalidity are the absolute grounds for invalidity, which should be examined ex officio during the registration procedure. The relative grounds for invalidity are earlier rights that prevent a trademark registration, but which the trademark offices do not examine on their own initiative.

 

Invalidity proceedings before the EUIPO

Declaration of invalidity and cancellation of an EU trade mark due to absolute grounds for refusal

An EU trade mark can be declared invalid if the following absolute grounds for refusal are present:

  •     The EU trademark was registered despite an absolute ground for refusal (which the EUIPO should have recognized per se). The most important absolute ground for refusal is lack of distinctiveness.
  •     The applicant was acting in bad faith when filing the application.

Invalidation and cancellation of an EU trademark due to relative grounds for refusal

An EU trademark may be declared invalid even if relative grounds for refusal exist, if earlier rights conflict (e.g., earlier trademarks, earlier business identifiers, copyrights).
Request for declaration of invalidity of an EU trademark

The application for a declaration of invalidity must be filed with the EUIPO. The fees are € 630.00. EUIPO will not process the application until the fee has been received.

The EUIPO has a wide margin of discretion to decide whether facts and evidence submitted late are to be taken into account or not, giving reasons for its decision (General Court, decision of 9 February 2022 - T-520/19 - HEITEC)

Invalidity proceedings before the German Patent and Trademark Office DPMA

Request for declaration of invalidity of a German trademark due to absolute grounds for refusal

The registration of a German trademark will also be declared invalid and cancelled upon request if there are absolute grounds for refusal, i.e. the trademark has been registered contrary to Sec. 3, Sec. 7 or Sec. 8 MarkenG. This is the case if the trademark is not eligible for registration or other absolute grounds for refusal exist or the applicant could not be the owner of the trademark.

The request for a declaration of invalidity due to absolute grounds for refusal of a German trademark must be filed in writing with the German Patent and Trademark Office (DPMA). The request must be substantiated (Sec. 53 (1), first and second sentence, MarkenG). Within three months after filing the request, the fee in the amount of 400 Euro must be paid. The first fee (No. 334 400) for the actual revocation application is € 100.00, the second fee (No. 333 450) for the further prosecution of the revocation application after opposition by the trademark owner is € 300.00. A German trademark - unlike an EU trademark - can no longer be cancelled due to absolute grounds for refusal under Sec. 8 II Nos. 1 to 3 Trademark Law if the trademark has been registered for more than ten years (Sec. 50 (2) sentence 3 Trademark Law).

Request for declaration of invalidity of a German trademark due to relative grounds for refusal

Auch dieser Antrag muss beim DPMA eingereicht und begründet werden ( (§ 53 Abs. 1 S. 1 und 2 MarkenG). Antragsberechtigt sind die Inhaber der älteren Rechte sowie Personen, die berechtigt sind, Rechte aus einer geschützten geografischen Angabe oder geschützten Ursprungsbezeichnung geltend zu machen (§ 53 Abs. 3 MarkenG). Innerhalb von drei Monaten nach der Einreichung des Antrags die Gebühr in Höhe von 400 Euro zu zahlen. Wird der Nichtigkeitsantrag auf mehr als ein älteres Recht gestützt, ist für jedes weitere Recht eine zusätzliche Gebühr in Höhe von 100 Euro zu zahlen.

Procedure of the revocation and invalidity proceedings

The DPMA informs the trade mark proprietor concerned about the revocation request or the application for a declaration of invalidity and that he may object to the request within two months. If he does not object, the trademark will be cancelled, otherwise the revocation proceedings or the invalidity proceedings will be carried out.

Official forms of the DPMA for revocation proceedings and invalidity proceedings

The DPMA provides various forms:

Request for declaration of invalidity due to absolute grounds for refusal (lack of registrability).

  • Request for declaration of invalidity due to absolute grounds for refusal (lack of registrability): Formular W 7442

Application for declaration of invalidity due to relative grounds for refusal (conflicting earlier rights)

  • Request for declaration of invalidity and cancellation of a trademark or withdrawal of protection of an internationally registered trademark due to earlier rights: Formular W 7642 
  • Annex to the application for invalidity on grounds of prior rights for registered prior rights: Formular W 7642.1
  • Annex to the application for invalidity of earlier rights for unregistered earlier rights: Formular W 7642.2

Counterattack by the owner of the contested mark

Non-use defense in nullity proceedings

A person who is confronted with an invalidity proceedings arising from an earlier trademark due to the invalidity of his EU trademark or his German trademark can defend himself with a plea of non-use. According to Art. 64 II, III UMV or Sec. 53 VI MarkenG, he can raise a plea of non-use of the earlier trademark. In this case, the applicant for invalidity must himself prove the use of his earlier trademark which preserves the rights. If he fails to do so, the application for invalidity will be rejected.

 

Consequences of a request for cancellation of trademark rights

Explanation of the revocation of a trademark

If the Office declares revocation of the trademark rights, this only takes effect from the date of the application for revocation. The trademark is therefore invalid, so to speak, as of the filing of the application for revocation (Art. 62 I UMV, Sec. 52 I MarkenG).

Declaration of invalidity of a trademark

However, the declaration of invalidity of a trademark has the effect that the trademark registration is invalid retroactively, i.e. already from the beginning (Art. 62 II UMV, Sec. 52 II MarkenG).

Exceptions

There are exceptions to this according to Art. 62 III UMV or Sec. 53 III MarkenG: Court decisions which have become final and enforced before the decision on revocation or invalidity of the trademark remain effective. The same applies to contracts which have been fulfilled before the decision on revocation or invalidity of the trademark. However, for reasons of equity, payments may be reclaimed here.

Remedies in revocation and invalidity proceedings

Revocation proceedings and cancellation proceedings before the EUIPO

The proprietor of an EU trade mark which has been declared revoked may appeal against this to the EUIPO within two months of notification of the decision, Art. 68 II UMV. The decision is then re-examined by the EUIPO, this time by a Board of Appeal. Decisions of the EUIPO Board of Appeal may again be appealed within two months of notification of the decision, namely an action before the Court of Justice of the European Union (ECJ), Art. 72 UMV.

Action before the General Court of the European Union

An action before the General Court of the European Union is subject to strict formal requirements. The mandatory content of the statement of claim is governed by Article 76 of the Rules of Procedure of the General Court of the European Union. The General Court of the European Union provides the model of an application as a guide. The parties must be represented by a lawyer. Only a lawyer authorized to appear before a court of a Member State or of another State party to the Agreement on the European Economic Area may appear before the General Court of the European Union as a representative or as an adviser of a party (Article 51 of the Rules of Procedure of the General Court of the European Union in conjunction with Article 19 of the Statute of the Court of Justice of the European Union.

Revocation proceedings and nullity proceedings before the DPMA

An appeal against the decision of the DPMA is admissible in revocation proceedings and nullity proceedings to the Federal Patent Court (BPatG) within one month after service of the decision, Sec. 66 I MarkenG.