COMMUNITY TRADEMARKS
sword
A
CTM owners should consider the for invalidation at OHIM, especially if says Izabella Dudek-Urbanowicz of Patpol.
I
f the owner of an earlier Community trademark (CTM) decides to initiate an opposition
or invalidation proceeding
against another party’s trademark before the Offi ce for Harmonization in the Internal Market (OHIM), the trademark owner must expect to prove that it has genuinely used the earlier mark, as the rival party will have the right to request this under the relevant legislation. As far as the opposition procedure is concerned, article 42(2) of
the Council Regulation No.
207/2009 of February 26, 2009 on the CTM states that “if the applicant so requests, the proprietor of an earlier CTM who has given notice of opposition shall furnish proof that, during the period of fi ve years preceding the date of publication of
the
CTM application, the earlier CTM has been put to genuine use in the Community in connection with the goods or services in respect of which it is registered and which he cites as justifi cation for his opposition, or that there are proper reasons for non-use, provided the earlier CTM has at that date been registered for not less than fi ve years”. Moreover, according to article 42(3) of
the
regulation, the request for furnishing proof of use may not only be fi led by the defendant in the opposition proceedings based on an earlier CTM but also in proceedings based on an earlier national mark valid in an EU member state. If this is the case, the defendant may request that the proprietor of an earlier national mark off ers proof of genuine use in the member state during the fi ve years preceding
46 World Intellectual Property Review Annual 2015 World Intellectual Property Review November/December 2014
the publication date of the CTM application in connection with the goods and services for which the national mark is registered, unless it can be proved that there are justifi able reasons for non-use of the mark. Analogous provisions are binding in the trademark invalidation procedures, which require the opposing party to show that its earlier mark has been put to genuine use for fi ve years before the date of the application for a declaration of invalidity, or—regardless of that period—the newer mark was fi led in bad faith. According to articles 57(2) and (3) of the regulation, where the earlier mark has been registered for fi ve years or more when the application for a declaration of the new application’s invalidity is fi led, the
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