Do you have a registered trademark and have you noticed that someone has applied to register a trademark that is similar or identical to yours? Did you want to object, but missed the deadline? At Bamboo, we are lawyers specializing in trademarks, and in this post, we explain what options you have for requesting the cancellation of a trademark if you have missed the opposition deadline.
A trademark is registered without prejudice to any third party's better rights. This means that trademark registration is not absolute and inviolable. It may happen that a third party with a trademark similar to mine, who did not file an opposition during the processing of my trademark application (for example, because they did not notice it), subsequently requests that the application be declared invalid.
Nullity and expiration in administrative proceedings before the SPTO
Firstly, it is important to note that, as of January 14, 2023, any claim for nullity or expiration that you wish to file directly against a trademark or trade name application Spanish will be made before the Spanish Patent and Trademark Office (Spanish Patent and Trademark Office), which has exclusive jurisdiction. This is established by the Seventh Final Provision of the Royal Decree-Law 23/2018, of December 21.
Civil courts and tribunals retain jurisdiction to hear cases of nullity and expiration only by way of counterclaim. This would be the case, for example, if the owner of a registered trademark sued another person for trademark infringement (for example, because that person is using a similar trademark in the market), and the defendant decided to invoke the nullity or expiration of the trademark file on which the plaintiff bases his action in the same legal proceedings.
Regarding the need to use the registered trademark and the possibility of it being declared expired due to lack of use, you can read this post.
The OEPM has provided an “Informative Manual on Administrative Nullity and Expiration” which can be consulted. here. The process consists solely of a written phase, as there are no hearings. The defendant will always have an initial period of two months to respond to the action. Then, depending on the nature of the action (invalidity or revocation), the plaintiff may have another period of one month either to respond to the proof of use submitted by the defendant (in cases of revocation actions) or to provide their own proof of use (in cases of relative invalidity actions where the defendant has requested proof of use from the plaintiff). The SPTO may make flexible requests to the parties, with time limits of no less than 10 days and no more than one month, for subsequent rounds of observations.
The official OEPM fees for processing nullity and expiration proceedings can be consulted. here. In addition, there are the fees of the trademark professional hired to handle the process.
Practical issues for assessing the success of a possible relative trademark invalidity
We refer to a claim for invalidity based on a prior trademark as “relative invalidity.” It is “relative” because the invalidity of the subsequent application depends on a prior application by the claimant. An example would be a claim for invalidity filed against a trademark that has already been granted because I missed the deadline for filing an opposition, which is similar to my trademark, registered previously.
At this point, we will attempt to summarize the main factors that may affect the success of a relative nullity claim.
The first thing to assess is whether the trademarks are sufficiently similar for there to be risk of confusion or association on the consumer. As we explained at the time in this post, For two trademarks to be confusingly similar (and, therefore, for the registration of the later trademark to be questionable), not only must they be similar or identical, but also, except in very exceptional circumstances, the goods or services they distinguish must be similar or identical. This is required by Article 6 of our Trademark Law and Article 8 of the Regulation on the European Union trademark. Belonging to the same classes in the Nice International Classification may serve as an indication that the goods or services may be similar, but it is not binding in itself. In fact, there are goods and services belonging to different classes of the Classification that may be related or complementary in the market (e.g., “software” in class 9 and “software design and development” in class 42).
The second thing to consider, taking into account trademark applications with effect in Spain, is whether the trademark application against which opposition was sought is a Spanish trademark (applied for before the Spanish Patent and Trademark Office) or a European trademark (applied for with the European Union Intellectual Property Office). The regulations for each case are different (Trademark Law for Spanish brands; and Regulation on the European Union trademark for European trademarks); the deadlines for filing oppositions with the registration offices are also the same (2 months from the publication of the application in the case of Spanish applications; and 3 months since the publication of the application in the case of European applications); and the office competent to hear the case is also competent.
The third thing to consider is whether or not the earlier trademark on which I am basing my nullity claim has been registered for more than five years for the purposes of proving its effective use if the defendant requests it during the proceedings. In relation to this point, we recommend reading this post which we have already referred to above. Filing a relative nullity claim without being sure that I will be able to prove the effective use of my trademark is very risky. In fact, it would be preferable to have all or almost all of the proof of use ready before filing the claim, as the one-month period granted by the SPTO may be too short to organize and prepare all the documentation for five years of trademark use.
Relative invalidity of a European trademark
With regard to European trademarks, the situation is similar, with the difference that the EUIPO has been handling trademark invalidity and revocation proceedings for many more years than the OEPM, as it has always had exclusive jurisdiction in direct proceedings. The characteristics of the process before the EUIPO can be consulted on its website. Guidelines. In practice, the EUIPO usually grants two rounds of observations to each party (sometimes three), with deadlines that are usually two months and can be extended for another two months without the need to provide any justification. This means that, in principle, the process is somewhat more “relaxed” in terms of deadlines than at the OEPM (for example, if the defendant requests proof of use of my trademark, I will have two months to prepare and submit it, and I can request an extension of another two months if I need more time).
The official fee for trademark invalidity or revocation proceedings before the EUIPO is considerably higher than that of the OEPM. You can consult the fees payable to the EUIPO in trademark matters. here. However, in either case, the cost is usually lower than that of legal proceedings.
Por último, debes saber que la posibilidad de anular una marca (sea española o europea) ya concedida prescribe a los 5 años desde que el titular de la marca anterior tuvo conocimiento de la marca posterior y pudo iniciar la nulidad. Es lo que se conoce como caducidad por tolerancia: si el titular de la marca prioritaria ha tolerado el uso de la marca posterior por un periodo de 5 años consecutivos con conocimiento de dicho uso, no podrá solicitar en lo sucesivo la nulidad de la marca posterior, salvo que ésta haya sido solicitada de mala fe.
Si se te ha pasado el plazo de oposición contra una solicitud de marca y te planteas cómo poder anular el registro, en Bamboo somos abogados especialistas en marcas y podemos ayudarte. No dudes en escribirnos a info@bamboo.legal or through our contact form.
