Just as the registration of a national trade mark before the Bulgarian Patent Office may be revoked, an EU trade mark is not protected forever either. Apart from lapsing if it is not renewed, the registration may also be brought to an end prematurely at the request of a third party – either by revocation or by a declaration of invalidity.
The two proceedings have different consequences. Invalidity is based on a defect that already existed at the time of registration. Revocation, by contrast, is based on a circumstance that arose after registration and takes effect for the future – as a rule from the date on which the application for revocation was filed. This post deals with the revocation of an EU trade mark before the European Union Intellectual Property Office (EUIPO).
Grounds for revocation
The rights of the proprietor of an EU trade mark are revoked on application to the Office where one of the three grounds under Article 58(1) of Regulation (EU) 2017/1001 (the EU Trade Mark Regulation, „EUTMR“) applies:
1. Non-use. Within a continuous period of five years, the trade mark has not been put to genuine use in the Union in connection with the goods or services for which it is registered, and there are no proper reasons for non-use.
2. Becoming generic. As a result of the acts or inactivity of the proprietor, the trade mark has become the common name in the trade for a product or service for which it is registered.
3. Misleading use. As a consequence of the use made of the trade mark by the proprietor, or with the proprietor’s consent, the trade mark is liable to mislead the public, particularly as to the nature, quality or geographical origin of the goods or services.
Where a ground for revocation exists only in respect of some of the goods or services, the registration is revoked for those goods or services only (Article 58(2) EUTMR).
Who may file for revocation?
Under Article 63(1)(a) EUTMR, an application for revocation may be filed by any natural or legal person, without having to demonstrate a legal interest. The purpose of the procedure is a public one – to keep the register accurate by clearing out signs that are no longer in use. In practice, the application is most often filed by a competitor wishing to free up the sign, or as a defensive measure against an opposition or an action based on an earlier mark that is not genuinely used.
Legal basis
The substantive and procedural framework is contained in three instruments:
– Regulation (EU) 2017/1001 on the European Union trade mark (EUTMR) – the substantive grounds;
– Delegated Regulation (EU) 2018/625 – the procedural rules governing revocation and invalidity proceedings;
– Implementing Regulation (EU) 2018/626 – the technical details of implementation.
Fee
The application for revocation is filed using an official EUIPO form and takes effect only once the fee has been paid. The fee for an application for revocation (or for a declaration of invalidity) of an EU trade mark is EUR 630.
Proceedings before the EUIPO
The application must be filed in writing and must identify the contested registration, the grounds relied on, and a statement of the facts, evidence and arguments in support.
The application is first examined for admissibility. If there are deficiencies, the applicant is given a period to remedy them; if the fee is not paid, the application is deemed not to have been filed.
Submissions of the parties and exchange of documents
Once the application is found admissible, the EUIPO communicates it to the proprietor of the mark and opens the adversarial part of the proceedings. The parties are granted time limits for the exchange of observations and evidence: the proprietor replies to the application, after which the applicant may comment. Where appropriate, the Office may grant further rounds of written observations. The proceedings are limited to the grounds, facts and evidence put forward by the parties.
Proof of genuine use
In revocation proceedings on the ground of non-use, the burden of proving use lies with the proprietor of the trade mark (Article 17 of Delegated Regulation 2018/625). The assessment takes account of the place, time, extent and nature of the use.
Genuine use also includes use of the mark in a form that does not alter its distinctive character as registered, as well as affixing the mark to goods or their packaging in the Union solely for export purposes (Article 18 EUTMR).
The proprietor may also rely on a proper reason for non-use. No one may claim revocation where, during the interval between expiry of the five-year period and the filing of the application, genuine use has been started or resumed; however, commencement or resumption within the three-month period preceding the filing is disregarded where the preparations for it were made only after the proprietor became aware that an application might be filed.
Decision making
After the adversarial part of the proceedings has closed, the Cancellation Division examines the application, the observations and the evidence and issues a decision which either
1. rejects the application for revocation, or
2. revokes the registration in whole or in part.
Unlike proceedings before the Bulgarian Patent Office, the EUIPO decision also rules on costs – as a rule, the losing party bears the costs within the limits laid down in the Regulation.
Legal effects
Revocation takes effect for the future – as a rule from the date on which the application for revocation was filed (Article 62(1) EUTMR). At the request of one of the parties, the decision may also set an earlier date on which the ground for revocation arose. From the relevant date, the EU trade mark is deemed not to have had the effects provided for in the Regulation.
Appeal
The decision of the Cancellation Division is subject to appeal before the Board of Appeal of the EUIPO within two months of notification, with the grounds of appeal to be filed within four months and against payment of a fee. The decision of the Board of Appeal may be appealed before the General Court of the EU, and the latter’s decision before the Court of Justice of the EU.
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Do you have a question about the revocation or the protection of a trade mark in Bulgaria or in the European Union? Then simply contact us. Our fee is agreed individually and depends on the specifics of each case.