What are the causes of trademark expiration?
Trademarks are granted for a period of 10 years, renewable indefinitely for the same period. However, there are other causes of a trademark expiration or revocation for which the OEPM may declare a trademark extinct due to it, as we will see throughout this article.
All industrial property rights, in this case referring to trademarks, are territorial and temporary. That is to say, they occupy a specific territory and are granted for a specific period of time and may expire for various reasons.
The revocation of a trademark is regulated in articles 54 to 57 of the Spanish Trademark Law, which establish common provisions for nullity and revocation applications.
It is important to be clear about the distinction between lapse and nullity, since, despite their similarities, which can lead to confusion, the crucial difference between them lies in their effects.
While revocation is effective from the date of application, nullity entails, with retroactive effect, immediate cancellation at the time of registration.
Causes of trademark expiration
The causes of forfeiture are:
- Failure to renew the trademark: The main cause of forfeiture is the failure to renew the trademark. Trademark registration is granted for an initial period of 10 years, which may be renewed for successive periods of another 10 years indefinitely. If the trademark is not renewed in the 6 months prior to the renewal term or in the following 6 months with the corresponding surcharges, the trademark will be declared forfeited. In this case there are two specific situations where a trademark will not lapse for this reason
- If a trademark has liens or a claim action in progress, it will not expire until they are resolved. However, if there is a change of ownership due to these proceedings, the new owner will have two months to renew the mark..
- If a chattel mortgage is registered on the trademark in the Trademark Registry, the trademark will not lapse for this reason. In addition, the holder of the mortgage may request the renewal of the owner’s name within two months. If he does not renew the trademark within the term, it will lapse. This expiration will be communicated to the Registry of Movable Goods
- When the holder of the trademark renounces to the same: The holder may renounce to his trademark by means of a written declaration before the Spanish Patent and Trademark Office (OEPM), being necessary to fill in the corresponding form. In order for the surrender to be effective, it is necessary to register it in the Trademark Registry. If the waiver request is filed before a different body, the latter must send it to the OEPM together with the corresponding documentation within a period of five days. Registration with the OEPM will ensure the legal protection of the surrender.
- Lack of use: Article 39 of the Trademark Law regulates this cause of revocation. It is considered that a trademark has not been used in a real and effective manner if it has not been used for 5 years after the granting of the trademark registration. This cause also applies if it has not been used for 5 consecutive years after the grant. After this time without use, any interested party may apply for revocation
Some of the causes justifying the lack of use of the trademark are the obstacle circumstances that are independent of the owner’s will, such as import restrictions and other official requirements imposed on the products or services for which the trademark is registered.
In order to prove the effective use of the trademark in the economic traffic, invoices, reports, catalogs and other evidence capable of proving such use may be submitted, and such use must be proved in the territory in which it has been registered.
- Vulgarization of the trademark. It occurs when the denomination of the trademark has become a usual designation of the product or service, a common way of referring to it, as for example the cases of “kleenex” – “handkerchief” or “rímel” – “mascara”.
When a mark becomes so common that it ceases to be distinctive and becomes descriptive, it loses its ability to be legally protected as a trademark. Although it may still be recognized as a commercially successful trademark, in legal terms, the trademark protection comes to an end and it loses its status as a registered trademark
- That the trademark misleads the public: When the trademark is being used in a way that may mislead the public, especially about the nature, quality or geographical origin of its products or services. Since the possibility of misleading is one of the absolute prohibitions of art. 5 of the Trademark Law, this circumstance must have arisen after the registration, otherwise it would not have been granted.
- Lack of legitimacy of the holder: This is the most remote cause and arises when the holder is not within the scope of art. 3 of the Trademark Law on those legitimized to do so, that is, those natural persons, legal entities that are not legitimized to do so.
We must emphasize that if the lapse will apply only to the specific areas of the services or products that are affected and not to the trademark as a whole.
What happens when a trademark expires, can it be recovered?
When a trademark expires, it loses its legal protection and becomes available to third parties. This means that another person or company can take advantage of the reputation and work done by the previous trademark holder.
However, the original owner also has the possibility of reapplying for the trademark registration once it has expired, and thus recovering it, provided that it does not infringe the prohibitions established in the trademark law and that it meets two requirements of the Trademark Law:
- The non-renewal must occur for causes totally unrelated and demonstrable to your will.
- The application for reinstatement of rights must be filed within two months after the cessation of the impediment that deprived you of renewing the trademark.
In this case, the holder starts from scratch and loses any rights generated by the previous registration in terms of seniority.
Preventive measures to protect a trademark
To protect a trademark from possible expiration, preventive measures can be taken. These include renewing the trademark within the established term, i.e during the 6 months prior to the renewal deadline.
In addition, it is important to use the trademark in a real and effective way, avoiding confusion on the part of consumers. It is also essential to focus the business on the classes of goods or services registered and to keep a constant watch on the competition to prevent the vulgarization of the trademark. If necessary, legal action can be taken to protect the trademark.
At Letslaw by RSM we are experts in trademark law, so it will be a pleasure to advise you in this area.
Letslaw es una firma de abogados internacionales especializada en el derecho de los negocios.