RS – Trade mark annulment & bad faith

Who?

The motion for annulment can be instigated by an interested party or a public prosecutor.

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 can be the basis for annulment.

Because of this, 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, except in cases of bad faith at the time of the application.

When?

If the owner of the prior right 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 30-day period to reply (and a potential extension of time, if filed for). Then the IPO will look at the arguments and come to their Decision.

Against this Decision, as with their other Decisions, it is possible to file a lawsuit before the Administrative Court.

*Use means on the RS market, for all or some goods the TM has been registered for. Other usual rules apply (proof of use needed only if more than 5 years have passed since the registration and there are no justifiable reasons for non-use)

In practice, oftentimes, the owner of the prior right is not an owner of a protected TM right, and can feel that the protected right should not be in that position and that it is infringing upon their rights and, often, profits.

Often it is the local distributor that will gain for such a situation.

As the owner of the prior, non-protected right is not in the position to instigate TM annulment, they are left with one last option – Lawsuit challenging the trade mark.

If the TM application or now registration has initially been filed against the principle of good faith, entity affected by this action can ask the Court to appoint them the owner of the TM.

This happens when:

• – a legal or contractual obligation has been broken in this way;
• – when a mark has been used on the market and has become well know (as described in 6bis Paris convention) prior to another entity trying to obtain it for same or similar goods after the fact.
• – if the term to file this lawsuit (5 years from the date the trade mark has been registered) has not passed

If successful this lawsuit will result in the change of ownership/strong> over the application/registration.

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