January 31, 2022 at 7:06 am
Each month we answer 3-5 questions our clients most often have and share it in our Q&A series.
Q1: When is this motion used and by whom?
Trade Mark annulment is filed for all or some goods and services that did not fulfill basic criteria from the start.
This refers to all absolute grounds, as well as basic rules on what can and cannot constitute a trade mark.
It can be filed by an interested party or the public attorney during the whole life of the trade mark.
It can be filed by the owner of the earlier right if the basis for the annulment are relative grounds for refusal or by the owner of the firm that is named same or similarly to the trade mark which has been filed at a later date.
Q2: What are the terms to instigate this motion?
One of the main criteria is that the owner of the earlier mark has been using their trade mark in the past 5 years (if the TM has been registered that long) – this applies if the basis for annulment are relative grounds for refusal.
Further, the owner of the earlier mark, cannot have known and stood by while the TM in question has been use in the past 5 years – in this case the annulment could only be filed if there was bad faith on the side of the owner of the later mark.
Additionally, if the trade mark to be annulled gained distinctiveness that it did not have at the time of the filing, an annulment procedure cannot be successfully filed on that basis.
Q3: What is the outcome?
This procedure is most often fought before the IPO and if successful the goods/(more often) services that are annulled are considered as never having been protected.
The IPO will forward the motion to the other side – they will have the time and opportunity to respond and the whole procedure is mainly held in written form.
In some jurisdictions (ME;SI;AL) – the procedure is brought before the Court by the owner of the older right, interested party or the public attorney during the whole life of the trade mark.
The outcome is the same – if successful, the trade mark, some of its classes or particular goods or services that are annulled are considered as never having been protected.
– In Bosnia & Hercegovina, if an opposition was filed unsuccessfully, the same reasons cannot constitute the basis for annulment later on – but new proof can be presented.
This is in a way a common sense stance, but it is only the Bosnian Law that explicitly states this.
– In Kosovo, possible oral hearings before the IPO are suggested by Law.
– In most territories the terms for reporting on the annulment motion and subsequent reply by the other side, as well as possibility of petitioning for the extension of that deadline are firmly set by the Law, which is not the case in most other procedures.