Cancellation Proceedings in Germany, the EU, and International Trademark Law

Cancellation proceedings are a critical legal mechanism to challenge and invalidate trademarks after registration. These proceedings may be initiated by third parties or ex officio by trademark authorities. Below is a detailed overview of cancellation procedures, their grounds, processes, and examples in Germany, the EU, and under the Madrid System.

1. Cancellation Proceedings in Germany

1.1 Legal Framework

• Governed by the German Trademark Act (Markengesetz, MarkenG), §§ 47–54.
• Conducted before the German Patent and Trademark Office (DPMA) and potentially escalated to the Federal Patent Court (Bundespatentgericht).

1.2 Grounds for Cancellation

Absolute Grounds (§ 50 MarkenG):

• Lack of distinctiveness.
• Descriptiveness or generic terms.
• Violation of public order or morality.

Relative Grounds (§ 51 MarkenG):

• Earlier identical or similar marks with a likelihood of confusion.
• Dilution or unfair advantage of a well-known mark.

Non-Use (§ 49 MarkenG):

• Failure to use the trademark within 5 years after registration or cessation of use for 5 consecutive years.

1.3 Procedure

• Initiation: Filed by any third party for non-use or relative/absolute grounds.
• Fees: €400 for cancellation based on absolute or relative grounds; €100 for non-use cancellations.
• Evidence Submission:
• For non-use: Opposing party must prove genuine use.
• For other grounds: Evidence of distinctiveness or earlier rights must be presented.
• Decision: Issued by the DPMA; appealable to the Federal Patent Court.

1.4 Example

Case: "Sparkassen-Rot" (I ZB 52/15)

• Sparkasse's red color trademark faced a cancellation request due to lack of distinctiveness.
• The German Federal Court of Justice (BGH) upheld the cancellation, emphasizing the strict requirements for color trademarks.

2. Cancellation Proceedings in the EU

2.1 Legal Framework

• Governed by the EU Trademark Regulation (EUTMR), Articles 58–64.
• Conducted before the European Union Intellectual Property Office (EUIPO).

2.2 Grounds for Cancellation

Absolute Grounds (Article 59 EUTMR):

• Non-distinctive or descriptive trademarks.
• Deceptive marks or those contrary to public order.

Relative Grounds (Article 60 EUTMR):

• Likelihood of confusion with earlier marks.
• Earlier well-known trademarks.

Non-Use (Article 58 EUTMR):

• Non-use for a continuous 5-year period.

Bad Faith (Article 59(1)(b) EUTMR):

• Registration made with the intent to block others or without intent to use.

2.3 Procedure

• Filing: Cancellation actions can be initiated by third parties or ex officio.
• Fees: €630 for cancellation applications.
• Process:
• Exchange of written arguments and evidence between the parties.
• Examination by the EUIPO Cancellation Division.
• Decision, appealable to the EUIPO Boards of Appeal and subsequently to the General Court and the CJEU.

2.4 Example

Case: "MONOPOLY Word Mark Case (T-663/19)"

• Hasbro’s re-filing of the "MONOPOLY" mark was challenged on grounds of bad faith.
• The General Court ruled that repeated filings to avoid proving genuine use constituted bad faith, leading to partial cancellation.

3. Cancellation Proceedings under the Madrid System (IR)

3.1 Legal Framework

• Governed by the Madrid Agreement and the Madrid Protocol.
• Cancellation proceedings are handled by the national trademark office of each designated country.

3.2 Grounds for Cancellation

• National laws of the designated country apply, typically including:
• Lack of distinctiveness or descriptiveness.
• Likelihood of confusion with earlier marks.
• Non-use or bad faith.

3.3 Procedure

1. Initiation: Cancellation must be filed with the national trademark office of the designated country.
2. Notification: The World Intellectual Property Organization (WIPO) is notified of cancellations but does not adjudicate them.
3. Decision: The national office issues a decision; cancellations apply only in the country where filed.

3.4 Example

Case: "ROQUEFORT Case"

• A French organization successfully sought cancellation of conflicting marks in several jurisdictions, emphasizing the importance of aligning with geographical indications.

4. Comparison of Cancellation Proceedings

5. Role of Trademark Attorneys in Cancellation Proceedings

5.1 Filing and Defending Cancellations

• Filing: Drafting cancellation requests based on detailed legal arguments.
• Defending: Responding to cancellation actions, including evidence of use or acquired distinctiveness.

5.2 Evidence Collection

• Gathering invoices, marketing materials, and other documentation to demonstrate genuine use.
• Conducting market surveys to prove distinctiveness or secondary meaning.

5.3 Strategic Planning

• Advising clients on when to file cancellations (e.g., to clear conflicting marks).
• Developing defense strategies to retain trademarks under attack.

5.4 Appeals and Litigation

• Representing clients in appeals before the DPMA, EUIPO, national offices, or courts.

5.5 Example

Case: "Adidas Three-Stripes Case (I ZR 126/20)"

• Adidas successfully defended its trademark against cancellation by proving widespread use and acquired distinctiveness, demonstrating the critical role of attorneys in evidence preparation.

6. Future Trends in Cancellation Proceedings

6.1 Increased Focus on Non-Use

• Non-use cancellations are becoming a common tool for clearing "deadwood" trademarks.

6.2 Bad Faith Challenges

• Greater scrutiny of trademark filings to prevent abuse of the system.

6.3 Digital Evidence

• Use of online sales data, social media activity, and digital advertising to prove genuine use or distinctiveness.

Cancellation proceedings are vital for maintaining the integrity of the trademark system. Trademark attorneys play a crucial role in filing, defending, and managing these actions, ensuring the protection and enforcement of their clients’ rights.