Trademark invalidity in the EU

There are two types of grounds for invalidity: absolute and relative. Absolute grounds for invalidity include the grounds for refusal which have been examined during the registration procedure. Relative grounds for invalidity concern earlier rights which take precedence over the CTM in accordance with the principle of “priority”- ie you can prove that you have been using the mark for longer.

A CTM may be declared invalid by invoking absolute grounds in the following cases:

Where the CTM 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.

A CTM 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 (existence of an earlier trade mark or sign.

Where another earlier right exists in a Member State which 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.

Fees

Initial opinion (optional) – £250 plus VAT
Filing fee payable to OHIM – €700 (approx. £780)
1st set of observations – £750 plus VAT
2nd set of observations – £650 plus VAT

Contact jane@trademarkroom.com for more infomation