9. Questions regarding cancellation proceedings

9.1. When is a Community trade mark cancelled and thus removed from the Register of Community trade marks?

The Community Trade Mark Regulation (CTMR) provides for two types of procedure that come under the generic term of "cancellation proceedings".

On the one hand, the rights of the proprietor of a Community trade mark can be revoked and, on the other hand, a Community trade mark can be declared invalid. The difference is that Revocation applies as from the date of the request, whereas a declaration of invalidity removes the registration from the Register with retroactive effect.

9.2. When can the rights of the proprietor of a Community trade mark be revoked?

The rights of the proprietor of a Community trade mark (CTM) can be revoked in the following cases:

In the absence of genuine use. The law establishes that a CTM must be put to genuine use in the European Union in the five years following its registration. Moreover, use must not be interrupted for over five years.

If, in consequence of the acts of the proprietor, the trade mark has become the common name for a product or service in respect of which it is registered and the proprietor has not taken sufficient measures to prevent this.

If, in consequence of the use made of it by the proprietor, a trade mark has become misleading as to the nature, quality or geographical origin of the goods and services for which it is registered.

9.3. When can a Community trade mark be declared invalid?

There are two types of grounds for invalidity: absolute and relative. Absolute grounds for invalidity include the grounds for refusal which have been examined ex officio during the registration procedure. Relative grounds for invalidity concern earlier rights which take precedence over the CTM in accordance with the principle of "priority".

A CTM may be declared invalid by invoking absolute grounds in the following cases:

Where the CTM was registered in spite of the existence of an absolute ground for refusal (in particular, if it was non-distinctive or descriptive).

Where the applicant acted in bad faith when filing the application. This mainly concerns cases where the applicant was pursuing illicit aims in filing the application for the trade mark.

A CTM may be declared invalid by invoking relative grounds in the following cases:

For the same reasons as those for which notice of opposition may be filed (existence of an earlier trade mark or sign, see Question 33).

Where another earlier right exists in a Member State which permits the use of the trade mark in question to be prohibited. This concerns, in particular, a right to a name, a right of personal portrayal, a copyright and an industrial property right such as an industrial design right.

9.4. When should an application for cancellation be filed? Are there particular time limits that should be observed?

An application for cancellation is only admissible if the CTM in question has been entered in the Register at the Office * . Registrations are published in the Community Trade Marks Bulletin (Part B). It is also possible to make requests for information held on file to establish whether a trade mark has already been registered (fee: 10 euro). An application for revocation on the basis of non-use is only admissible if at the date of filing of the request the CTM has been registered for more than five years. There is no time limit for filing an application for cancellation. However , if the proprietor of an earlier right acquiesces in the use of a later CTM for a period of five successive years, he/she is no longer entitled to file an application for invalidity on relative grounds (limitation in consequence of acquiescence).

Rule 23, CTMIR

9.5. Is there a form for requesting cancellation?

There are two separate forms for the two types of procedure (declaration of invalidity and revocation), although it is not compulsory to use them. They are available on the website of the Office.

Request for Invalidity and Request for Revocation

9.6. How much does an application for cancellation cost?

The fee for requesting a declaration of invalidity is EUR 700. The fee for requesting a revocation is EUR 700. The application is not deemed to have been filed until the fee has been paid.

9.7. In what language should the application for cancellation be filed?

The application must be filed in one of the two languages of the CTM concerned, provided that they are languages of the Office. If this is not the case (ie. if the first language is not a language of the Office), only the second language of the CTM may be used.

9.8. Is it possible to rely on several grounds for cancellation?

An application for cancellation may be based on several different grounds . However, unless a fee for invalidity and a fee for revocation is paid, it is not possible to rely both on grounds for invalidity and for revocation in the same request, as invalidity and revocation are considered two different proceedings with different characteristics.

9.9. Is representation obligatory in order to file an application for cancellation?

Yes for applicants who do not have their domicile, principal place of business or real and effective commercial establishment within the European Union. Such persons must seek representation from a legal practitioner or professional representative whose name appears on the list kept with the Office and whose place of business is within the European Union.

9.10. Who is responsible for bearing the costs of an application for cancellation?

The losing party in cancellation proceedings must bear the fees and costs of the other parties. The costs to be refunded are, however, limited, which means that the person who bears the costs will not have to pay above a certain maximum limit.

9.11. If an application for cancellation is withdrawn, is the fee still refundable?

The fee is not refunded when an application for cancellation is withdrawn. The party that interrupts cancellation proceedings by withdrawing the application must also refund the costs incurred by the other parties up to that point (in accordance with the legal limits), unless a different decision is taken on grounds of equity.

Art 85, CTMR and Rule 94, CTMIR.

9.12. How long do cancellation proceedings last?

It is impossible to give exact indications of how long cancellation proceedings last for. The Office sees to it, however, that such proceedings are dealt with promptly in order to establish a legal guarantee as swiftly as possible.

OHIM

Trade Marks

9. Questions regarding cancellation proceedings