A registration of a trademark can be cancelled. What does trademark cancellation actually involve, and how is it different from invalidation of a trademark registration?
A trademark is a sign used to identify and distinguish the goods or services of one business from those of another. See examples of trademarks.
Registering a trademark, that is obtaining a right of protection, gives its owner the exclusive right to use that mark for the goods or services it covers, within the relevant territory. In Poland this means marks registered with the Polish Patent Office (UPRP), or across the whole EU for marks registered with EUIPO.
Under Article 168(1) of the Polish Industrial Property Law:
A right of protection for a trademark lapses as a result of:
1) the expiry of the period for which it was granted;
2) surrender of the right by the owner before the Patent Office, with the consent of any parties who hold rights in it.
Article 169(1) further provides that a right of protection also lapses as a result of:
1) failure to put the registered trademark to genuine use for the goods covered by the right of protection during an uninterrupted period of five years following the decision granting protection, unless there are proper reasons for non-use;
2) the mark losing its distinctive character because, through the owner’s acts or omissions, it has become the customary designation for the goods it was registered for;
3) acts of the owner, or of third parties with the owner’s consent, that make the mark liable to mislead the public, in particular as to the nature, quality, or geographical origin of the goods;
4) the removal from the relevant register of a legal person that held the right of protection;
5) the owner’s failure to take action to prevent use of a collective or certification mark that is inconsistent with the rules for using the mark;
6) use of a collective or certification mark by the owner in a way that risks misleading the public, as referred to in Article 136¹(1)(2) or Article 136³(1)(2);
7) an amendment to the regulations for using a collective or certification mark, as a result of which those regulations no longer meet the requirements of Article 138(4) or (7), or one of the grounds for refusal referred to in Article 136¹(1) or Article 136³(1) applies to them, unless the owner removes the inconsistency before a decision on cancellation is issued.
In the cases covered by Article 169, the Patent Office issues a decision confirming cancellation of the right of protection at the request of any interested party.
In practice, the ground relied on most often is non-use trademark cancellation: five years of genuine non-use is enough to expose a registration to a cancellation request from a competitor, without the requester having to prove any wrongdoing on the owner’s part.
Anyone can file a request for cancellation of a registered trademark. No specific legal interest needs to be shown.
The request is filed with the office where the mark is registered, so the Polish Patent Office (UPRP) for a Polish national mark, or the EU Intellectual Property Office (EUIPO) for an EU trademark.
Where cancellation is sought on the ground of non-use for the preceding five years, the request itself can be short: it only needs to identify the mark and the date from which cancellation is requested, together with the official fee. No supporting argument is required, because it is the trademark owner who bears the burden of proving genuine use during the relevant period. If the owner fails to do so, the office cancels protection for the goods or services for which no evidence of use was submitted.
A cancellation decision always states the date from which protection lapses. Cancellation therefore has effect ex nunc, that is, only for the future.
A cancelled right of protection is treated as having validly existed from the filing date up to the date of cancellation set out in the decision.
When the office issues a decision on invalidation of a right of protection, the effect is as though the registration had never existed. Invalidation therefore has effect ex tunc, meaning “from the outset”.
By contrast, for cancellation on the ground of non-use, the earliest possible cancellation date is the first day after the five-year period from the registration date has elapsed.
Filing a request for trademark cancellation involves the following costs:
UPRP:
EUIPO:
The cancellation decision also rules on costs. The losing party usually bears the official fee and the winning party’s representative costs, which, where the representative is a patent attorney, are typically capped at around PLN 400 before UPRP and EUR 300 before EUIPO.
Intellectual property specialists can guide you through a cancellation proceeding and protect your interests, whether you are seeking to cancel someone else’s mark or defending your own registration. Instructing a patent attorney to prepare a cancellation request, or to build the evidence and arguments needed to defend a mark, can significantly improve the outcome.
We file trademark cancellation and invalidation requests on behalf of our clients, and we defend clients’ marks when a third party files for cancellation. Ask us for a quotation.
Trademark cancellation is a proceeding before a trademark office that ends the protection of a registered mark before its registration term expires. The most common ground is non-use trademark cancellation, filed when the owner has not put the mark to genuine use for five consecutive years.
Cancellation takes effect ex nunc, meaning the mark is treated as protected up to the cancellation date set by the office. Invalidation takes effect ex tunc, meaning the registration is treated as if it never existed.
Anyone can file a request for cancellation of a registered trademark, without having to show a specific legal interest, both before the Polish Patent Office and before EUIPO.
The burden of proof lies with the trademark owner. The party requesting cancellation only has to identify the mark and the date from which cancellation is sought; it is the owner who must demonstrate genuine use, or a proper reason for non-use.
Before the Polish Patent Office the official fee is PLN 1,000, plus a PLN 17 stamp duty when the request is filed by a professional representative. Before EUIPO the official fee is EUR 630. Representative fees for filing, further submissions, and any hearing come on top.