A trademark, being an object of intellectual property, is protected from the moment of its registration. Moreover, in some cases, there are grounds for terminating the legal protection of a trademark. This process is called trademark cancellation. So, what are the details of this process and what are the reasons to cancel the trademark?
What is trademark cancellation?
Today, international trademark registration is especially relevant in small industries (consumer goods: food, clothing, machinery and much more). Any consumer goods are often sold in several countries at once. In general, the holders of international trademarks covering a wide range of countries or operating almost around the world are large holdings and network companies. However, every year the number of international registrations filed by representatives of small and medium-sized businesses is growing.
However, it is no secret that after registration a trademark can often not be used by the copyright owner or used only for part of the registered goods or services. The possibility of canceling the validity of a trademark registration gives third parties the right to obtain legal protection for a trademark that is similar or confusingly similar, which has not been used by the copyright holder for a certain period of time established by law.
According to the laws of European countries, if a trademark not used for five consecutive years, it can be canceled.Atrium Business Solutions
The question of canceling the registration of a European trademark is decided by the World Intellectual Property Organization (WIPO) based on the submitted application. For European trademark purposes, all the European Union is considered as a single jurisdiction. Therefore, if the European trademark has been used in at least one of the countries of the European Union, the trademark cancellation proceeding based on its non-use is impossible.
Trademark cancellation reasons
Considering the above, in order to eliminate the risk of violation of the exclusive right of the owner, as well as the cancellation of a trademark on the basis of non-use, it is very important to understand and determine what is meant by its use. The direct evidence of the use of a trademark is its use on the owner’s products through the production, sale, import, storage of such products, the provision of services under such a trademark in the country or countries where it was registered, as well as the conclusion of license agreements.
When evaluating evidence of the use of a trademark in advertising, print media, on official forms, other business documents, it is necessary to take into account the confirmation of these facts of use in practice. In other words, if the trademark that marks the goods was used in business correspondence, but in fact, the goods themselves were not produced and were not entered into civil circulation in any other way, then such evidence can be challenged and, is not direct evidence of use.
Except for non-use reason the trademark cancellation can be done according to the reasons listed below:
- The expiration of the trademark exclusive rights.
- Based on a court order on the early termination of the legal protection of the mark on goods that do not have common characteristics of their quality or other general characteristics.
- If the trademark is declared invalid.
- In the case of the trademark owner’s refusal.
- Upon termination or liquidation of the legal entity of the trademark owner.
- In the case of its transformation into a symbol that has come into general use as a designation of goods of a certain type.
The pros and cons of brand cancellation
As it is known, international trademarks (registered according to Madrid Agreement) are associated with basic registration for 5 years, therefore, in those countries where trademark cancellation proceeding for non-use for less than five years is legally possible, the cancellation procedure is carried out as part of the cancellation of one basic mark.
As a rule, many European countries provide a five-year period, therefore, the validity of an international trademark does not depend on the validity of the basic registration, therefore, the cancellation of an international trademark by one common process is impossible. In such a case the independent cancellation processes in individual countries where the TM is protected are required. Thus, if during international registration the valid trademarks were contrasted, it is possible to clear the way for registering your marks using the cancellation procedure. This is an undeniable advantage of the trademark cancellation process.
In order to cancel the national trademarks in countries such as Germany and the United Kingdom, it is necessary to file an application with the national Patent Office for canceling the registration of a trademark. Such an application may be submitted by any person. The Patent Office notifies the trademark owner about the received application and provides a deadline for objections sending. In the absence of objections from the copyright holder, the registration of a trademark is canceled by the decision of the Patent Office.
If the copyright holder objects, the consideration of the dispute is carried out either by the Patent Office (Great Britain) itself, or submitted to the court (Germany). The length of the trial depends on the validity of the parties’ positions and the evidence presented. The trademark cancellation in France is performed through the judicial procedure and by the interested person only. However, before filing a lawsuit in the court, it is necessary to send an official letter to the owner of the canceled sign with alleged claim warning. After sending such a letter, the statement of claim must be filed with the court within the next three months.