Lawyers in trademark revocation and invalidity actions
Letslaw is a law firm specialized in trademark revocation and invalidity actions.
The exclusive right to granted and registered trademarks can be extinguished by a declaration of invalidity or revocation of the trademark. Both invalidity and revocation can be partial, i.e. they can extinguish the exclusive right to the trade mark, referring only to a part of the goods or services for which the trade mark was granted.
The difference between nullity and revocation is that nullity refers to the fact that the registered trademark does not comply with the legal requirements for registration at the time of registration; therefore, nullity will operate retroactively, i.e. it is considered that the trademark that was declared null and void would never have been validly granted, whereas trademark revocation, to which the owner’s surrender is assimilated, means that the trademark has been fully valid until it has effectively lapsed.
The Spanish Patent and Trademark Office (hereinafter “EPO”) will also be competent to declare the invalidity or revocation of a trademark.
It is important to note that the nullity action is no longer only judicial, but can also be brought administratively before the EPO.
If there is invalidity and/or revocation for part of the goods or services for which the mark is registered, the declaration of invalidity or revocation will extend only to the goods or services in question.
There can be two cases of invalidity of trade marks:
- Absolute invalidity (action of an irrevocable nature).
- When it is contrary to the provisions of Article 5 of the Trademark Act;
- When the applicant has acted in bad faith when filing the trade mark application.
- Relative invalidity
- When it is contrary to the provisions of Articles 6 to 10 of the Trademark Act.
Depending on the case, an application for absolute and/or relative invalidity of the trade mark may be filed, as well as the defence of the validity of the trade mark in the event of failure of any of the aforementioned actions.
The trademark will lapse upon application to the SPTO or by means of a counterclaim in a trademark infringement action.
There are different types of revocation, such as:
- When it would not have been used (Lapse for non-use).
- When it has become, due to the activity or inactivity of its owner, the usual designation of a product or service for which it is registered. (Revocation due to popularization)
- When the trademark is liable to mislead the public (revocation for misleading). The SPTO will also declare the trademark to be revoked:
- When it has not been renewed, unless there are encumbrances registered on a trademark or pending claim and/or a chattel mortgage on the trademark has been registered in the trademark register.
- When it has been surrendered by the owner.
TIME LIMITS FOR RESPONSE
The trade mark owner has 2 months to reply to the application for invalidity and/or revocation.
Among the actions that we can carry out from Letslaw are:
- Administrative actions relating to the invalidity and revocation of trade marks.
- Various actions, such as responses or initiation of oppositions, review of acts in administrative proceedings, filing of contentious-administrative appeals.
- Actions for nullity.
- Actions for infringement of trademark rights.
- Proceedings to establish compensation for trademark infringement.
- Actions for usurpation.
- Advice and defense of all types of assets in both administrative and judicial phases.
- Trademark registration and renewal.
- Trademark transfers.
- Registration of patents, industrial designs and models.
- Distinctive signs.
- Patents and utility models.
- Industrial designs.
- Intellectual Property.
At Letslaw we help you to exercise all the necessary actions to protect your trademark and to guarantee and protect your rights over it.