The European Union trade mark regulation ( EUTMR) provides for two types of procedures that come under the generic term of ‘cancellation proceedings’.
The rights of the proprietor of an EU trade mark can be revoked and an EU trade mark can be declared invalid. The difference is that revocation applies as from the date of the request, whereas a declaration of invalidity removes the registration from the Register of European Union trade marks with retroactive effect.
The rights of the proprietor of an EU trade mark can be revoked in the following cases.
In the absence of genuine use. The law establishes that an EU trade mark must be put to genuine use in the European Union in the 5 years following its registration. Moreover, use must not be interrupted for over 5 years.
If, in consequence of the acts of the proprietor, the trade mark has become the common name for a product or service for which it is registered and the proprietor has not taken sufficient measures to prevent this.
If, in consequence of the use made of it by the proprietor, a trade mark has become misleading as to the nature, quality or geographical origin of the goods and services for which it is registered.
There are two types of grounds for invalidity: absolute and relative. Absolute grounds for invalidity include the grounds for refusal that have been examined ex officio during the registration procedure. Relative grounds for invalidity concern earlier rights that take precedence over the EU trade mark in accordance with the principle of ‘priority’.
An EU trade mark may be declared invalid by invoking absolute grounds in the following cases.
Where the EU trade mark was registered in spite of the existence of an absolute ground for refusal (in particular, if it was non-distinctive or descriptive).
Where the applicant acted in bad faith when filing the application. This mainly concerns cases where the applicant was pursuing illicit aims in filing the application for the trade mark.
An EU trade mark may be declared invalid by invoking relative grounds in the following cases.
For the same reasons as those for which notice of opposition may be filed.
Where another earlier right exists in a Member State that permits the use of the trade mark in question to be prohibited. This concerns, in particular, a right to a name, a right of personal portrayal, a copyright and an industrial property right such as an industrial design right.
An application for cancellation is only admissible if the EU trade mark in question has been entered in the Register of European Union trade marks. Registrations are published in the European Union Trade Marks Bulletin (Part B). An application for revocation on the basis of non-use is only admissible if the EU trade mark has been registered for more than 5 years at the date of filing of the request.
There is no time limit for filing an application for cancellation. However, if the proprietor of an earlier right acquiesces in the use of a later EU trade mark for a period of five successive years, he or she is no longer entitled to file an application for invalidity on relative grounds (limitation in consequence of acquiescence).
two separate forms for the two types of procedure (declaration of invalidity and revocation), available on the EUIPO website, which can be filed
For an application for revocation or a declaration of invalidity to be deemed filed, a fee must be paid.
fees section for more detail concerning the application for revocation or a declaration of invalidity fee.
Applicants who do not have their domicile, principal place of business or real and effective commercial establishment within the EEA (
European Economic Area) are required to be represented before the Office. To access the Office’s list of representatives, please consult
The application must be filed in one of the two languages of the EU trade mark concerned, provided that they are languages of the Office. If this is not the case (i.e. if the first language is not a language of the Office) only the second language of the EU trade mark may be used. The rules regarding the language of proceedings are explained in detail in the
Guidelines, Part A, General Rules, Section 4, Language of Proceedings.
An application for cancellation may be based on several different grounds. However, unless a fee for invalidity and a fee for revocation is paid, it is not possible to rely both on grounds for invalidity and for revocation in the same request, as invalidity and revocation are considered two different proceedings with different characteristics.
The losing party in cancellation proceedings must bear the fees and costs of the other parties. The costs to be refunded are, however, limited, which means that the person that bears the costs will not have to pay above a certain maximum limit.
The fee is not refunded when an application for cancellation is withdrawn. The party that interrupts cancellation proceedings by withdrawing the application must also refund the costs incurred by the other parties up to that point (in accordance with the legal limits), unless a different decision is taken on grounds of equity.