Guide to unregistering a trademark

nulidad registro marca

Is it possible to get the invalidity of a registered trademark in bad faith?

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Despite its importance for companies, it is frequent that the brand that champions an activity has not been registered. Sometimes, this circumstance is taken advantage of by third parties who register the trademark in bad faith.

What can the activity owner do in these situations?

In this new article we want to analyze the cases in which we can defend ourselves against illegitimately requested trademark registrations.

Branding and regulation concept

All signs to distinguish the products or services of a company in the market and to be represented in the Trademark Registry in a way that allows the competent authorities and the public to determine the clear and precise object of the protection granted deserve the consideration of a trademark. to its owner.

Within the concept of signs are included the words (including people's names) the drawings, the letters, the numbers, colors, the shape of the product or its packaging, and even the sounds.

Its regulation is in the Law 17/2001, of 7 December, brands, Royal Decree 687/2002, of 12 July, by which the regulation for the execution of the Law is approved 17/2001, of 7 December, of Brands, and the resolution of 9 January 2019 of the Director of the SPTO specifying the general conditions, requirements, technical characteristics and formats for the electronic filing of the different types of trademarks from the 14 January 2019.

Form of opposition to the registration of the trademark and appeal

The opposition can be formulated by those natural or legal persons who consider themselves injured in the registration procedure of a trademark. Opposition may be formulated on the basis of one or more previous rights as long as they all belong to the same owner, as well as on the basis of all or part of the products or services for which the previous right has been protected or requested, and said opposition may be directed against all or part of the products or services for which the trademark object of opposition is requested.

The opposition must be formulated before the Spanish Patent and Trademark Office by means of a reasoned and duly documented writing, within two months from the date of publication of the application in the BOPI, and it will only be considered presented if the corresponding fee is paid within this period.

Those presented directly at the SPTO take approximately a week to be recorded and those presented in other competent Bodies within the deadline, but outside the SPTO, according to the date of receipt, must be received and subsequently recorded, what supposes that, sometimes it takes a few more days until it is recorded in the database.

In resolution, the SPTO makes a final decision within a procedure. This decision may be to grant or deny the requested registration.. Against any resolution, it will be possible to file an appeal within a period of one month from the publication of the resolution in the Official Industrial Property Gazette..

The aforementioned period of two months is essential to formulate opposition, because in the event that it expires, it would only proceed to seek the nullity or voidability of the trademark registration, with the requirements that we will see later.

How to obtain the absolute nullity of the registration of a trademark?

The invalidity of the registration of a trademark can be requested through a request addressed to the SPTO or through a counterclaim in action for trademark infringement, provided that the brand incurs one of the absolute prohibitions provided in the article 5 Act 1/2001, or that the applicant for registration had acted as bad faith. In these cases there is no term.

Now, It is necessary to take into account that when the contravention incurred by the brand consists of i) lack distinctive character ; ii) consist exclusively of signs or indications that can be used in trade to designate the species, quality, the amount, destination, the value, the geographical origin or time of obtaining the product or the provision of the service; o iii) consist solely of signs or indications that have become customary in the common language or in the loyal and constant customs of the trade, the annulment action will not be viable when said brand has acquired, before the date of presentation of the application for nullity or counterclaim for nullity, a distinctive character for the products or services for which it is registered due to the use made of it by its owner or with his consent.

What is the relative nullity of the registration of the trademark?

In addition to the radical nullity, It is also possible to make a request for annulment against a registration of a trademark made by the Spanish Patent and Trademark Office when it contravenes the provisions of the articles 6, 7, 8, 9 and 10 Trademark Law. These articles establish the so-called “prohibitions on”, that refer to earlier trademarks, Previous trade names, renowned brands or trade names, other rights and brands of agents or representatives.

We say that it is an assumption of relative nullity because when the owner of any of the rights referred to in said articles has tolerated the use of a later registered trademark for a period of five consecutive years with knowledge of said use, You may not subsequently request the invalidity of the later mark on the basis of said earlier right for the products or services for which the later mark had been used, Unless the request for this was made in bad faith (so good, in this case, the owner of the subsequent trademark may not oppose the use of the earlier right, despite the fact that this right can no longer be invoked against the subsequent trademark).

Además de lo anterior, It is worth noting that whoever had previously requested the invalidity of a trademark or filed a counterclaim in a trademark violation action, You will not be able to file another request for nullity or a counterclaim based on another of those rights that you could have alleged in support of the first claim.

Legal proceedings for the invalidity of the trademark

The owner of a registered trademark may bring the corresponding civil or criminal actions before the jurisdictional bodies against those who violate his right and demand the necessary measures for its safeguarding., all without prejudice to the submission to arbitration, if possible.

Especially, the owner whose trademark right is injured may claim in civil law:

a) The cessation of acts that violate your right;

b) Compensation for damages suffered;

c) The adoption of the necessary measures to prevent the violation from continuing and, en particular, products are withdrawn from economic traffic, packaging, wrappers, advertising material, labels or other documents in which the violation of trademark rights and the seizure or destruction of the media mainly intended to commit the infringement has materialized (all of it, at the expense of the offender);

d) Destruction or disposal for humanitarian purposes, unless the nature of the product allows the removal of the distinctive sign without affecting the product; and) The attribution of ownership of the products, materials when possible and;

f) The publication of the sentence at the expense of the convicted person through announcements and notifications to interested persons.

It is worth noting that, both in the case of relative nullity and in the case of absolute nullity, It is up to the interested party seeking the declaration of nullity to demonstrate the certainty of the facts that determine said nullity of the brand inscription, while it will be the defendant who will have to provide the facts that deny the existence or legal effectiveness of the same.

Competent judicial bodies in trademark nullification procedures

On patents, trademarks and industrial designs, the only competent judicial bodies are the Commercial Courts of Barcelona, Madrid or Valencia. This is so by application of the provisions of the article 118 Act 24/2015, of 24 July, patent, which states that “será objetivamente competente el Juez de lo Mercantil de la ciudad sede del Tribunal Superior de Justicia de aquellas Comunidades Autónomas en las que el Consejo General del Poder Judicial haya acordado atribuir en exclusiva el conocimiento de los asuntos de patentes”.

Well, dicho acuerdo es el Acuerdo adoptado por la Comisión Permanente del Consejo General del Poder Judicial en la sesión celebrada el día 21 December 2016, que atribuye la competencia objetiva a los referidos tres tribunales.

conclusions

In conclusion, podemos comprobar que existen multitud de opciones que asisten al titular de un derecho anterior para proteger su derecho de marca frente a pretensiones de terceros que le causen perjuicio o impliquen un ejercicio de mala fe. Now, se hace fundamental que, in these cases, el titular que pretende defender su derecho actúe con máxima prontitud y presteza, con la ayuda de un abogado especializado en marcas.

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