Trademark Invalidity

Trademark invalidity is the annulment by a court of a mark that should not have been registered. Under IPL Article 25, if one of the absolute grounds in Article 5 or the relative grounds in Article 6 existed, the court declares the mark invalid.

Who May Sue?

Any person with a legitimate interest, public prosecutors and relevant public bodies. Actions based on relative grounds are brought by the holders of the earlier rights concerned. The defendant is the person registered as owner at the date of the action, or its successor.

Grounds

• Absolute grounds such as lack of distinctiveness, descriptiveness or misleading character; see Distinctiveness
• Likelihood of confusion with an earlier mark
• Protection of a well-known trademark
• Earlier rights such as trade names, unregistered marks, copyright, designs or personality rights
• Bad-faith filing

Defences

• Acquired distinctiveness: A mark that acquired distinctiveness before the claim cannot be invalidated on descriptiveness grounds (IPL Article 25(4)); see Acquired Distinctiveness.
• Acquiescence: An earlier right holder that knowingly tolerated the use of the later mark for five consecutive years cannot seek invalidity, unless the later registration was in bad faith (IPL Article 25(6)); see Acquiescence.
• Non-use: Where the claimant’s mark has been registered for more than five years, the defendant may require proof of use (IPL Article 25(7)).

Effect

An invalidity judgment takes effect from the filing date; protection is deemed never to have arisen (IPL Article 27(1)). Final judgments are effective against everyone and are entered in the register. Partial invalidity is ordered where the ground concerns only some goods or services.

Grounds arising after registration, such as non-use, lead to trademark revocation rather than invalidity.