A trademark shall be declared invalid:
- If it is devoid of any distinctive character and if it does not conform to the requirements prescribed by the law for its registrability (absolute grounds for refusal, which can be asked by anyone interested in it);
- It is in conflict with earlier rights of third parties (relative grounds for refusal, which may be invoked by the holders of the conflicting earlier rights).
In this post we talk about:
Trademark invalidity: absolute and relative grounds
There are two types of invalidity, absolute and relative.
Trademark invalidity for absolute grounds can be asserted by anyone is interested in.
Trademark invalidity for relative grounds can be filed only by some qualified subjects, by virtue of the ownership of a sign which is potentially likely to be confused with the one that is to be contested.
For example, the proprietor of an earlier trademark that is identical with or similar to your trademark and that is in your business field or in a business field similar to yours, shall be entitled to challenge your trademark on the basis of the risk of confusion due to the presence of two identical or similar brands in the market.
A trademark shall be declared to be revoked:
- For vulgarization namely if it has become the common name in the trade for a product or a service and it lost its distinctive capacity;
- If it become invalid, namely:
- the trademark has became liable to mislead the public;
- the trademark has became contrary to law, public policy or to the accepted principles of morality;
- for failure by the proprietor of the controls provided for by the regulation on the use of the collective trademark
- for non use, if, within a continuous period of five years from the registration date (the term is variable depending on the State in which the trademark is registered) the trademark has not been put to genuine use or if the use is suspended for an uninterrupted period of five years (variable term depending on the State in which the trademark is registered), and there are no proper reasons for non use.
The verification of the period within which the effective use of the trademark must start must be carried our according to the country of interest.
We shortly summarize a case of a trademark declared invalid because contrary to public policy: in Spain there is a chain of restaurants named “La Mafia se siente a la mensa” (mafia sits at the table).
Italy asked EUIPO not to recognize this name as a trademark, because it directly makes reference to the organized crime named “mafia” and such trademark somehow trivialized the negative connotation of the term. In 2015 EUIPO accepted Italy’s request. The refusal was reiterated by the EU Court (March 15, 2018), which stated:
“The term Mafia cannot be associated with anything good. It is known and associated all over the world with organized crime. Such criminal activities violate the values on which the Union is based, such as, specifically, the values of respect for human dignity and freedom, which are indivisible and constitute the spiritual and moral heritage of the Union. Moreover, given their transnational dimension, mafia’s criminal activities represent a serious threat to the security of all the Union”.
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