Extinguishment of the EUTM Right

The right in an EUTM may be extinguished through surrender by its proprietor. The surrender must be declared to the EUIPO in writing and will only have effect once it is entered on the Register. If any right affecting the mark (a right in rem, for example) is on the Register, the surrender may only be entered with the agreement of the holder of that right. Finally, if a license had been registered, the proprietor of the trademark will have to prove that he has informed the licensee of his intention to surrender the EUTM.

Grounds for revocation, which implies extinguishment of the right in the EUTM, are as follows: (a) if, within a continuous period of five years, the trademark has not been put to genuine use in the EU, in connection with the goods or services for 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 trademark 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 trademark 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 trademark 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 it by the proprietor the trademark becomes a misleading indication.

An EUTM may be invalidated on coming under an absolute ground or a relative ground for invalidity. There are absolute grounds for invalidity when the EU trademark has been registered in breach of Art. 7 EUTMR (absolute grounds for refusal) or when the applicant acted in bad faith when he filed the EUTM application. There are relative grounds for invalidity when the EUTM has been registered in breach of Art. 8 EUTMR (relative grounds for refusal) or when there is an earlier right (a right to a name, a right of personal portrayal, a copyright, an industrial property right), or an earlier designation of origin or geographical indication.

The invalidity or revocation of an EUTM will be declared on application to the EUIPO or on the basis of a counterclaim in infringement proceedings. If the grounds for invalidity or revocation only exist in relation to some of the goods or services, the rights in the trademark will be declared invalid or revoked in respect of those goods or services only.