At last: invalidity and revocation actions now available before TM offices in Italy, Romania and Spain

One of the most significant innovations introduced by the EU Trade Mark Directive 2015/2436 (the so-called trade mark reform package) was the requirement for all EU countries to implement – where not already in place - administrative procedures for both revocation and declaration of invalidity of trade mark registrations. These administrative procedures would either replace or supplement the court proceedings required to revoke or invalidate a trade mark registration. As trade mark owners will be aware, judicial actions before national courts (typically) last longer and are more expensive than administrative proceedings before the national TM offices. 

EU countries had until 14 January 2023 to transpose into national laws the relevant provisions of the Directive.

Since 2015 when the Directive was adopted, multiple EU countries have introduced administrative procedures before the national trade mark offices (e.g., Portugal in 2019 and France in 2020). These procedures guarantee trade mark owners access to less complex and cost-effective proceedings.

Italy, Romania, and Spain adopted the regulatory changes only recently, shortly before the deadline of 14 January 2023. We have asked our colleagues from CMS’ offices in those jurisdictions to provide further information on how the new proceedings work in each jurisdiction and how to start an invalidity or revocation action before the respective trade mark offices:

Italy (Paola Nunziata, CMS Italy)

Starting from December 2022, it will be open for trade mark owners to commence administrative procedures before the Italian Office for Patents and Trademarks (UIBM) to seek the revocation or the declaration of invalidity of a registered trade mark.

In respect of both revocation and invalidity actions, the interested party must file a written application with the UIBM to commence the proceeding. The application must: (i) be drafted in Italian; (ii) include detailed information about the applicant, the contested trade mark and its proprietor; (iii) explain the grounds on which it is based; and (iv) contain the indication of the goods and services against which it is addressed. In the absence of such last indication, the application will be deemed to be directed against all the goods or services claimed by the contested trade mark.

Furthermore, the application must be accompanied by any document able to substantiate it, as well as by the receipts attesting the payment of the fees due to the UIBM.

In both actions, the proceeding will be divided into three stages: (i) the first, aimed at allowing the UIBM to verify the admissibility of the application for revocation or invalidity; (ii) the second, aimed at allowing the parties, if they have not reached a settlement agreement, to submit their arguments/defences; and (iii) the third, consisting of the decision phase.

The decision must be issued by the UIBM within 24 months from the filing of the application for revocation or invalidity and may be challenged before the Board of Appeals. This new time limit will be widely welcome given that the average time for such cases before the Italian Court is significantly more than 24 months.

If the decision declares the revocation or the invalidity of the contested trade mark, it will be recorded in the Register kept by the UIBM.

The decision issued by the Board of Appeals may be challenged before the Supreme Court, but only on grounds relating to: (i) jurisdiction and competence; (ii) violation of rules of law; (iii) nullity of the challenged decision or of the proceedings; or (iv) failure by the Board of Appeals to examine a decisive fact which was the subject of discussion between the parties. Conversely, the Supreme Court cannot be requested to proceed with a new assessment on the merits.  

Costs related to administrative proceedings (before UIBM) may be awarded to the successful party within the limit of Euro 600. In case of proceedings before the Supreme Court, costs to be awarded to the successful party will be calculated based on the tariffs and criteria provided by the Ministerial Decree no. 55/2014.

Romania (Cristina Popescu / Carmen Turcu, CMS Romania)

As of 14 January 2023, the invalidation and revocation of a trade mark may be requested before the Romanian State Office for Inventions and Trade Marks (OSIM).

According to Romania’s recently updated Trade Marks Law (Law no. 84/1998 on Trade Marks and Geographical Indications), these administrative proceedings before OSIM are optional and accordingly a brand owner can still choose to file a claim directly with the competent courts of law.

The application will go through the following steps:

1. The applicant files the application with the OSIM, containing the information required by the law. The claim should be drafted in the Romanian language and include the grounds for cancellation and the supporting evidence.
2. Within five days of the registration of the claim, the secretary of the Board checks whether the claim contains all relevant information and observes the formal requirements provided by the law. The secretary then forwards the claim to the “rapporteur”, who is one of the members of the Board.
3. If the claim is irregular, the claimant is notified and is given five days to remedy the irregularities. If the irregularities persist, the Board rejects the claim without summoning the parties.
4. If the claim is compliant, it is served to the respondent who should reply within 30 days of the communication.
5. The reply of the respondent is served to the claimant who can file a standpoint within ten days of the communication.
6. The parties are summoned for a public hearing.
7. Upon the reasoned request of the parties or where the hearing reveals a need for the filing of supplementary evidence, the hearing can be adjourned until later.
8. At the end of the debates, the Board deliberates in secret. The Board should take a decision immediately. In special cases, depending on the complexity of the application, the decision may be postponed for a period not exceeding 7 days, which may be extended up to two times, each time for not more than 7 days (i.e., up to a maximum of 21 days in total). If the rendering of the decision has been postponed, the decision may not be delivered before such postponement date.
9. If, during the deliberation, the Board finds that further information or documents are required, it may reopen the case by setting a new hearing and summoning the parties.

The OSIM decision can be appealed within 30 days of the communication before the Bucharest Tribunal (the law does not provide any particular grounds for appeal, so it can be assumed that the OSIM decision could be appealed for whatever grounds of legality and/or merits). The decision of the Bucharest Tribunal is only subject to appeal before the Bucharest Court of Appeals.

The Romanian Trade Marks Law does not expressly provide for the recovery of legal costs incurred by the successful party in the administrative procedure for invalidity and revocation. Nonetheless, it remains to be seen whether other cost provisions (particularly civil procedure rules) could apply by analogy, especially if the successful party requests an award of costs separately in court or during the appeal procedure.

You can find more detailed information on this matter at this link.

Spain (Ricardo Gómez-Barreda, CMS Spain)

From 14 January 2023, the invalidation and revocation of a trade mark must be requested before the Spanish Patents and Trademarks Office (SPTO), and the Commercial Courts will only be able to assess the invalidity or revocation of a trade mark where such a request is made in the context of trade mark infringement proceedings (through a counterclaim filed by the defendant).

As per the new regulation, the application to be filed before the SPTO will go through the following steps:

1. The applicant files the application with the SPTO. The application must be drafted in Spanish and must contain, among others, the grounds for cancellation and the supporting evidence. The official fee must be paid.
2. Once the SPTO has checked that the application fulfils all legal requirements, the application is served on the respondent (trade mark proprietor), who must reply within two months of the date on which the notification is published by the SPTO.
   1. In cases of invalidity applications based on a prior trade mark which has been registered for more than five years, the respondent can request proof of use of the prior trade mark, which must be submitted by the applicant within one month.
   2. In cases of revocation applications based on lack of genuine use, the respondent must file proof of use and the SPTO will serve such evidence on the applicant for further arguments.
3. The SPTO may request the parties to submit as many briefs of arguments as the SPTO deems convenient to assess the case.
4. Invalidity applications must be decided by the SPTO within 24 months from the date the application is filed, whereas revocation applications must be decided within 20 months. If the application is not decided within those deadlines, the application is deemed to be rejected.
5. An appeal can be filed to the SPTO’s Appeal Board within one month from the publication of the decision. The appeal must be accompanied by the payment of a fee. If the appeal is successful, the fee is refunded (however, no other costs can be recovered by the successful party).

The decision by the SPTO’s Appeal Board can be further appealed before the courts where the decision has improperly assessed the case on the merits (for instance if the Board has wrongly applied a ground for invalidity) and where the proceeding before the SPTO has not been followed as per the law. As of 14 January 2023, these appeals are no longer to be filed before the Administrative Courts, but before the Commercial Courts specialised in trade marks.

Comment

The above changes recently introduced in Italy, Romania and Spain (as well as in other EU countries) are welcome, as trade mark owners can benefit of (typically) cheaper and shorter proceedings to revoke or invalidate a trade mark registration. As a result, the number of revocation and invalidity actions being filed (before the national TM offices) in those countries will likely increase in future. Accordingly, a trade mark owner could now adopt a more aggressive approach vis-à-vis the proprietor of a contested trade mark in those countries. Conversely, a proprietor of a trade mark registration (in those countries) that is vulnerable to revocation or invalidity actions could now have to adopt a more cautious strategy, whenever it wishes to rely on that registration, given the higher risk that the registration could be challenged before the national TM office.