EUIPO and German Patent and Trademark Office DPMA

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. As a trademark cancellation lawyer, I know that revocation for non-use is 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 them.

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.

As a trademark cancellation lawyer, I know that there are absolute and relative grounds for invalidity. Absolute grounds for invalidity should be examined ex officio during the registration procedure. The relative grounds for invalidity are earlier rights that can force the cancellation of a trademark registration, which the trademark offices do not examine on their own initiative.

Before you seek out a trademark cancellation lawyer, you should entrust yourself with the reasoning for an invalid trademark. An EU trademark 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 designations, copyrights). In such cases, your trademark cancellation lawyer will request a declaration of invalidity.

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

As trademark cancellation lawyer, I would advise checking the declaration to make sure that all the paperwork and evidence is complete. Facts and evidence submitted late might not be considered by the EUIPO. (General Court, decision of 9 February 2022 - T-520/19 - HEITEC)

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

A trademark registration lawyer will tell you that a 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 in question.

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). As your trademark cancellation lawyer, I will be able to compile the request taking into account all legal factors and formalities (Sec. 53 (1), first and second sentence, MarkenG). Within three months after filing the request, the fee in the amount of 400 Euros must be paid. As a trademark cancellation lawyer, it is my obligation to tell you that 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

This application must be submitted and justified to the DPMA (§ 53 Abs. 1 S. 1 and 2 MarkenG). Eligible to apply are the holders of older rights and those entitled to claim rights from a protected geographical indication or designation of origin (§ 53 Abs. 3 MarkenG). The fee of 400 Euros must be paid within three months of submitting the application. If the nullity application is based on more than one older right, an additional fee of 100 Euros is required for each additional right.

Procedure of the revocation and invalidity proceedings

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

For all the legal proceedings mentioned until now, you of course need to file the respective paperwork. The documents you need can all be found and accessed online, or through a trademark cancellation lawyer, who will be able to fill them out for you and correspond with the respective offices.

Official forms of the DPMA for revocation proceedings and invalidity proceedings

The DPMA provides various forms: Offical 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

A person who is confronted with an invalidity proceeding arising from an earlier trademark due to the invalidity of their EU trademark or their German trademark can defend themselves with a plea of non-use (Art. 64 II, III UMV or Sec. 53 VI MarkenG) and the support of a trademark cancellation lawyer. In this case, the applicant for invalidity must themselves prove the use of their earlier trademark which preserves the rights. If they fail to do so, the application for invalidity will be rejected.

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, as a trademark cancellation lawyer, I know that 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.

The proprietor of an EU trademark which has been declared revoked may appeal against this to the EUIPO within two months of notification of the decision together with their trademark cancellation lawyer, 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

As a trademark cancellation lawyer, I have to mention that 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 – ideally a trademark opposition lawyer or a trademark cancellation 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).

As trademark cancellation lawyer, I am well versed and entrusted with all the necessary legal proceedings and will represent you and your right in all trademark proceedings.