Attorneys specializing in trademark revocation and invalidity

Letslaw by RSM is a law firm specialized in trademark revocation and invalidity actions. Our team of expert trademark attorneys is qualified to provide legal advice and representation in cases related to the extinction of the exclusive right of a trademark.

The exclusive right of granted and registered trademarks may be extinguished by a declaration of nullity or revocation of the trademark.

Both nullity and revocation may be partial, that is, they may extinguish the exclusive right over the trademark, referring only to a part of the goods or services for which the trademark was granted.The fundamental difference between nullity and revocation lies in its retroactive effect.

Nullity refers to situations in which the registered trademark does not comply with the legal requirements for registration at the time of registration. Therefore, the nullity will operate retroactively, i.e., it is considered that the trademark that was declared null and void would never have been validly granted.

On the other hand, the lapse of the trademark, to which the owner’s surrender is assimilated, means that the trademark has been fully valid until it has effectively lapsed. There can be different causes of trademark revocation such as, for example, the lack of renewal of the trademark, the owner’s surrender, the lack of use…

The Spanish Patent and Trademark Office (hereinafter “OEPM”) will also be competent to declare the nullity or revocation of a trademark. It is important to note that the nullity action is no longer only judicial, but can also be filed administratively before the OEPM.

If there is nullity and/or revocation for part of the goods or services for which the trademark is registered, the declaration of nullity or revocation will extend only to the goods or services in question.

Nullity

There can be two cases of trademark nullity:

• Absolute nullity: the action to request absolute nullity is imprescriptible. Absolute nullity may be declared in two situations:
  • When the applicant has acted in bad faith when filing the trademark application.
  • When it is contrary to the provisions of article 5 of the Trademark Law. Some examples of why trademarks could not be registered:
    • Those that contain signs or indications that have become common parlance or loyal and constant customs in commerce.
    • Those that reproduce or imitate the coat of arms, flag and other emblems of Spain, Autonomous Communities, municipalities and provinces without due authorization.
• Relative invalidity: When it is contrary to the provisions of articles 6 to 10 of the Trademark Law.

Some examples of prohibitions that would lead to relative invalidity are:

• • Signs identical to an earlier trademark or similar or with identical or similar goods may not be registered as trademarks.
  • Earlier trade names (registered in Spain) may not be registered as trademarks.
  • May not be registered as trademarks and well-known trade names.
  • May not be registered, without authorization, the civil name, surname, pseudonym or image that identifies a person other than the trademark
  • Signs that reproduce, imitate or transform creations protected by a copyright or other industrial property right may not be registered without authorization.
  • The agent or representative, without justification of his action, may not register that mark in his name without the consent of the owner.

Depending on the case, an application for absolute and/or relative nullity of the trademark may be filed, as well as the defense of the validity of the trademark with the support of lawyers specialized in trademark revocation and nullity in the event of failure of any of the aforementioned action.

Revocation

The trademark will lapse upon application to the OEPM or through a counterclaim in a trademark infringement action.

There are different types of forfeiture, such as:

1. When it had not been used (Lapse for lack of use).
2. 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 vulgarization).
3. When the trademark is likely to mislead the public (Revocation due to misleading).

Likewise, the OEPM will declare the revocation of the trademark:

1. 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 registry.
2. When it has been surrendered by the owner.

The limits for response

In the event that an application for nullity or revocation of a trademark is filed, the owner of the trademark has a period of two months to respond to such application.

Among the actions that we can carry out from Letslaw as lawyers specialized in trademark revocation and invalidity are:

• Administrative actions related to the nullity and revocation of trademarks.
• Various actions, such as opposition, review of acts in administrative proceedings, filing of contentious-administrative appeal.
• Actions for nullity.
• Actions for infringement of trademark rights.
• Process for the establishment of a compensation for trademark infringement.
• Actions for usurpation.
• Advice and defense of all types of assets in both administrative and judicial phases.
• Renewals.
• Trademark registration and renewal
• Trademark transfers.
• Registration of patents, industrial designs and models.
• Distinctive signs.
• Patents and Utility Models.
• Industrial designs.
• Intellectual Property.

From Letslaw by RSM, as lawyers specialized in trademark registration, revocation and nullity, we help you to exercise all the necessary actions to protect your trademark and to guarantee and protect your rights over it. Do not hesitate to contact us.