What are the causes of trademark revocation?
All industrial property rights, in this case referring to trademarks, are territorial and temporary. In other words, they occupy a specific territory and are granted for a specific period of time, being able to be revoked for several reasons that we will explain in this article.
Revocation is regulated in articles 55 to 57, with common stipulations for nullity and revocation applications in the following articles, of the Spanish Trademark Law.
It is important to differentiate between revocation and nullity, since the latter has retroactive effects, being cancelled from the moment of registration (for more information, art. 60 of the Trademark Law).
What are the causes of revocation of a trademark?
The causes of revocation are:
- Failure to renew the trademark: Trademark registration is granted for a 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 lapsed.
- When the holder of the trademark renounces to it: through a written declaration and before the SPTO, being necessary to fill in the corresponding form. But “if the application is filed before a different body from the Spanish Patent and Trademark Office, the body that receives it will send it to the former, together with the accompanying documentation, within five days following its receipt” (art. 56. 2. Trademark Law).
- Lack of use: Regulated in art. 39 of the Trademark Law, we find this situation if the trademark is not subject to a real and effective use during the 5 years following the publication of the grant of registration of the trademark. And it will have the same effects if this fact occurs during 5 uninterrupted years afterwards and not in the period immediately following the grant. Once this time has elapsed without such use, any interested party may promote its revocation (a possible intention would be to register it as its own). Taking into account the exception of paragraph 5 of the same article: “Obstructive circumstances that are independent of the will of its owner, such as import restrictions or other official requirements imposed on the goods or services for which it is registered, shall be recognized as causes justifying the lack of use of the trademark”, and other exceptions that can be found in art. 57 of the Trademark Law. In order to prove the effective use of the trademark in the commercial trade, it is possible to provide invoices, reports, catalogues and other evidences capable of proving such use, which must be proved in the territory in which it has been registered.
- Vulgarization of the trademark. It occurs when the trademark has become a usual designation of the product or service, a usual way of referring to it, as for example the cases of “kleenex”, “donuts” or “rímel”.
- That the trademark misleads the public: When the trademark is carrying out a use 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 legitimization 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 entitled to do so.
It is important to bear in mind that the revocation does not have to occur in the totality of the services or products of the trademark, as indicated in art. 56. 2: “If the cause of revocation only exists for a part of the products or services for which the trademark is registered, its declaration will only be extended to the affected products or services”.
What happens when a trademark expires? can it be regained?
When a trademark expires, it becomes available for a third party to re-register it, being able to take advantage of the reputation or the effort and work achieved by the previous owner.
The same way that a third party may apply for the registration of the trademark, the previous owner may also re-apply for such trademark, as long as it is done in accordance with the Trademark Law and without incurring in relative or absolute prohibitions (articles 5 to 10 of the Trademark Law). If this process is carried out, it is starting from scratch, so that the holder would lose all rights generated by the seniority of the previous registration.
Preventive measures to protect a trademark
Always renew the trademark in due time, which means during the 6 months prior to the expiration date, use the trademark in an effective and real way without being able to mislead the consumer, operate the business in the chosen classes, granted in the registration for the goods or services, and keep an exhaustive vigilance of the competitors to avoid the vulgarization of the trademark, as well as to take legal action when it is considered necessary.
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