Who?
The motion for annulment can be instigated by an interested party.
However, if based on relative grounds only the owner of a prior right can file for annulment.
Why?
At the time of the application the basic conditions were not met – meaning both absolute & relative grounds as well as bad faith can be the basis for annulment.
Also, the earlier right can be copyright or other industrial property rights.
If the annulment is approved, legally, the affected trade mark (in full or partially) will be considered as never to have existed.
How?
The annulment motion is a written document.
The owner of the prior right has to prove use of their trade mark* otherwise no annulment will be possible – this will depend on whether the later trade mark owner requests the proof, but the assumption should always be that this request will be filed.
When?
If the owner of the prior right was aware and did nothing for 5 consecutive years of later right’s use – no annulment procedure is available, except in cases of bad faith.
What is next?
The motion is sent to the owner of the later right by the IPO giving them a 2-month period to reply (and a potential 2-month extension of time, if filed for). Then the IPO will look at the arguments and come to their Decision. The IPO can arrange for hearings during this process. Also, the IPO can invite both sides to file additional documents.
Against this Decision, as with their other Decisions, it is possible to file an appeal before the Complaint’s Commission within 30 days of receipt.
Further, against Appeal’s commission Decision a lawsuit can be filed before the Administrative Court.
*Use means on the KS market, for all or some goods the TM has been registered for. Other usual rules apply (proof of use only if more than 5 years has gone after the registration and there are no justifiable reasons for non-use)
