Surrender
1. An EU trade mark may be surrendered in respect of some or all of the goods or services for which it is registered.
2. The surrender shall be declared to the Office in writing by the proprietor of the trade mark. It shall not have effect until it has been entered in the Register. The validity of the surrender of an EU trade mark which is declared to the Office subsequent to the submission of an application for revocation of that trade mark pursuant to Article 63(1) shall be conditional upon the final rejection or withdrawal of the application for revocation.
3. Surrender shall be entered only with the agreement of the proprietor of a right relating to the EU trade mark and which is entered in the Register. If a licence has been registered, surrender shall be entered in the Register only if the proprietor of the EU trade mark proves that he has informed the licensee of his intention to surrender. The entry of the surrender shall be made on expiry of the three-month period after the date on which the proprietor satisfies the Office that he has informed the licensee of his intention to surrender, or before the expiry of that period, as soon as he proves that the licensee has given his consent.
4. If the requirements governing surrender are not fulfilled, the Office shall communicate the deficiencies to the declarant. If the deficiencies are not remedied within a period to be specified by the Office, the Office shall reject the entry of surrender in the Register.
5. The Commission shall adopt implementing acts specifying the details to be contained in a declaration of surrender pursuant to paragraph 2 of this Article and the kind of documentation required to establish a third party's agreement pursuant to paragraph 3 of this Article. Those implementing acts shall be adopted in accordance with the examination procedure referred to in Article 207(2).
SECTION 2 — Grounds for revocation
Grounds for revocation
1. The rights of the proprietor of the EU trade mark shall be declared to be revoked on application to the Office or on the basis of a counterclaim in infringement proceedings:
(a)
if, within a continuous period of five years, the trade mark has not been put to genuine use in the Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use; however, no person may claim that the proprietor's rights in an EU trade mark should be revoked where, during the interval between expiry of the five-year period and filing of the application or counterclaim, genuine use of the trade mark has been started or resumed; the commencement or resumption of use within a period of three months preceding the filing of the application or counterclaim which began at the earliest on expiry of the continuous period of five years of non-use shall, however, be disregarded where preparations for the commencement or resumption occur only after the proprietor becomes aware that the application or counterclaim may be filed;
(b)
if, in consequence of acts or inactivity of the proprietor, the trade mark has become the common name in the trade for a product or service in respect of which it is registered;
(c)
if, in consequence of the use made of the trade mark by the proprietor of the trade mark or with his consent in respect of the goods or services for which it is registered, the trade mark is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services.
2. Where the grounds for revocation of rights exist in respect of only some of the goods or services for which the EU trade mark is registered, the rights of the proprietor shall be declared to be revoked in respect of those goods or services only.
SECTION 3 — Grounds for invalidity
Absolute grounds for invalidity
1. An EU trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings:
(a)
where the EU trade mark has been registered contrary to the provisions of Article 7;
(b)
where the applicant was acting in bad faith when he filed the application for the trade mark.
2. Where the EU trade mark has been registered in breach of the provisions of Article 7(1)(b), (c) or (d), it may nevertheless not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered.
3. Where the ground for invalidity exists in respect of only some of the goods or services for which the EU trade mark is registered, the trade mark shall be declared invalid as regards those goods or services only.
Relative grounds for invalidity
1. An EU trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings:
(a)
where there is an earlier trade mark as referred to in Article 8(2) and the conditions set out in paragraph 1 or 5 of that Article are fulfilled;
(b)
where there is a trade mark as referred to in Article 8(3) and the conditions set out in that paragraph are fulfilled;
(c)
where there is an earlier right as referred to in Article 8(4) and the conditions set out in that paragraph are fulfilled;
(d)
where there is an earlier designation of origin or geographical indication as referred to in Article 8(6) and the conditions set out in that paragraph are fulfilled.
All the conditions referred to in the first subparagraph shall be fulfilled at the filing date or the priority date of the EU trade mark.
2. An EU trade mark shall also be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings where the use of such trade mark may be prohibited pursuant to another earlier right under the Union legislation or national law governing its protection, and in particular:
(a)
a right to a name;
(b)
a right of personal portrayal;
(c)
a copyright;
(d)
an industrial property right.
3. An EU trade mark may not be declared invalid where the proprietor of a right referred to in paragraph 1 or 2 consents expressly to the registration of the EU trade mark before submission of the application for a declaration of invalidity or the counterclaim.
4. Where the proprietor of one of the rights referred to in paragraph 1 or 2 has previously applied for a declaration that an EU trade mark is invalid or made a counterclaim in infringement proceedings, he may not submit a new application for a declaration of invalidity or lodge a counterclaim on the basis of another of the said rights which he could have invoked in support of his first application or counterclaim.
5. Article 59(3) shall apply.
Limitation in consequence of acquiescence
1. Where the proprietor of an EU trade mark has acquiesced, for a period of five successive years, in the use of a later EU trade mark in the Union while being aware of such use, he shall no longer be entitled on the basis of the earlier trade mark to apply for a declaration that the later trade mark is invalid in respect of the goods or services for which the later trade mark has been used, unless registration of the later EU trade mark was applied for in bad faith.
2. Where the proprietor of an earlier national trade mark as referred to in Article 8(2) or of another earlier sign referred to in Article 8(4) has acquiesced, for a period of five successive years, in the use of a later EU trade mark in the Member State in which the earlier trade mark or the other earlier sign is protected while being aware of such use, he shall no longer be entitled on the basis of the earlier trade mark or of the other earlier sign to apply for a declaration that the later trade mark is invalid in respect of the goods or services for which the later trade mark has been used, unless registration of the later EU trade mark was applied for in bad faith.
3. In the cases referred to in paragraphs 1 and 2, the proprietor of a later EU trade mark shall not be entitled to oppose the use of the earlier right, even though that right may no longer be invoked against the later EU trade mark.
SECTION 4 — Consequences of revocation and invalidity
Consequences of revocation and invalidity
1. The EU trade mark shall be deemed not to have had, as from the date of the application for revocation or of the counterclaim, the effects specified in this Regulation, to the extent that the rights of the proprietor have been revoked. An earlier date, on which one of the grounds for revocation occurred, may be fixed in the decision at the request of one of the parties.
2. The EU trade mark shall be deemed not to have had, as from the outset, the effects specified in this Regulation, to the extent that the trade mark has been declared invalid.
3. Subject to the national provisions relating either to claims for compensation for damage caused by negligence or lack of good faith on the part of the proprietor of the trade mark, or to unjust enrichment, the retroactive effect of revocation or invalidity of the trade mark shall not affect:
(a)
any decision on infringement which has acquired the authority of a final decision and been enforced prior to the revocation or invalidity decision;
(b)
any contract concluded prior to the revocation or invalidity decision, in so far as it has been performed before that decision; however, repayment, to an extent justified by the circumstances, of sums paid under the relevant contract may be claimed on grounds of equity.
SECTION 5 — Proceedings in the office in relation to revocation or invalidity
Application for revocation or for a declaration of invalidity
1. An application for revocation of the rights of the proprietor of an EU trade mark or for a declaration that the trade mark is invalid may be submitted to the Office:
(a)
where Articles 58 and 59 apply, by any natural or legal person and any group or body set up for the purpose of representing the interests of manufacturers, producers, suppliers of services, traders or consumers, which, under the terms of the law governing it, has the capacity in its own name to sue and be sued;
(b)
where Article 60(1) applies, by the persons referred to in Article 46(1);
(c)
where Article 60(2) applies, by the owners of the earlier rights referred to in that provision or by the persons who are entitled under Union legislation or the law of the Member State concerned to exercise the rights in question.
2. The application shall be filed in a written reasoned statement. It shall not be deemed to have been filed until the fee has been paid.
3. An application for revocation or for a declaration of invalidity shall be inadmissible where an application relating to the same subject matter and cause of action, and involving the same parties, has been adjudicated on its merits, either by the Office or by an EU trade mark court as referred to in Article 123, and the decision of the Office or that court on that application has acquired the authority of a final decision.
Examination of the application
1. On the examination of the application for revocation of rights or for a declaration of invalidity, the Office shall invite the parties, as often as necessary, to file observations, within a period to be fixed by the Office, on communications from the other parties or issued by itself.
2. If the proprietor of the EU trade mark so requests, the proprietor of an earlier EU trade mark, being a party to the invalidity proceedings, shall furnish proof that, during the period of five years preceding the date of the application for a declaration of invalidity, the earlier EU trade mark has been put to genuine use in the Union in connection with the goods or services in respect of which it is registered and which the proprietor of that earlier trade mark cites as justification for his application, or that there are proper reasons for non-use, provided that the earlier EU trade mark has at that date been registered for not less than five years. If, at the date on which the EU trade mark application was filed or at the priority date of the EU trade mark application, the earlier EU trade mark had been registered for not less than five years, the proprietor of the earlier EU trade mark shall furnish proof that, in addition, the conditions set out in Article 47(2) were satisfied at that date. In the absence of proof to this effect, the application for a declaration of invalidity shall be rejected. If the earlier EU trade mark has been used only in relation to part of the goods or services for which it is registered, it shall, for the purpose of the examination of the application for a declaration of invalidity, be deemed to be registered in respect of that part of the goods or services only.
3. Paragraph 2 shall apply to earlier national trade marks referred to in Article 8(2)(a), by substituting use in the Member State in which the earlier national trade mark is protected for use in the Union.
4. The Office may, if it thinks fit, invite the parties to make a friendly settlement.
5. If the examination of the application for revocation of rights or for a declaration of invalidity reveals that the trade mark should not have been registered in respect of some or all of the goods or services for which it is registered, the rights of the proprietor of the EU trade mark shall be revoked or it shall be declared invalid in respect of those goods or services. Otherwise the application for revocation of rights or for a declaration of invalidity shall be rejected.
6. A record of the Office's decision on the application for revocation of rights or for a declaration of invalidity shall be entered in the Register once it has become final.
Delegation of powers
The Commission is empowered to adopt delegated acts in accordance with Article 208 specifying the details of the procedures governing the revocation and declaration of invalidity of an EU trade mark as referred to in Articles 63 and 64, as well as the transfer of an EU trade mark registered in the name of an agent as referred to in Article 21.
Source: EUR-Lex (Publications Office of the EU), © European Union, reuse permitted under Commission Decision 2011/833/EU.
