Why trademark can be cancelled?
A trademark can be cancelled if it is no longer in use
Often a trademark is already registered but not currently used by its holder or is used only nominally. This limits opportunities of others to use identic or similar mark.
In case when a trademark is registered but not used any interested person has the right to apply to the Intellectual property protection court for early cancellation of legal protection of the trademark.
Early cancellation of legal protection of the trademark can have the following results:
- Early cancellation of legal protection in regard to all goods and/or services mentioned in the trademark certificate
- Early cancellation of legal protection in regard to some goods and/or services that trademark holder cannot prove using or that the applicant is not claiming
A trademark is considered as a trademark in use when it is used to identify those goods and services for which it is registered. In this case the trademark is placed on goods that are in civil commerce and trademark is used when services to the third parties are rendered.
After three years in use a trademark becomes vulnerable.
- Legal protection of trademark can be terminated early in regard to all or some goods for the identification of which this trademark is registered due to its non-use within any three consecutive years after the state registration.
- The application for cancellation of legal protection of the trademark due to its non-use can be filed by the interested party to the Intellectual property protection court after the three years period mentioned above and if the trademark was not used before the date of the application.
- The trademark holder has to prove that the trademark is being used.
- When the court decides to cancel earlier the legal protection of the trademark due to its non-use the court can consider evidence provided by the trademark holder proving that trademark has not been used due to reasons beyond his control.
- Cancellation of the legal protection of the trademark means cancellation of the exclusive rights for this trademark.
Proper Trademark Use
- Trademark is used by the trademark holder.
- Trademark is used by the person who has the right to use it under the license agreement and in accordance with the article 1489 of the Civil Code of the Russian Federation.
- Trademark is used by the person who has the right to use it under the supervision of the trademark holder and in accordance with the p. 2 of the article 1484 of the Civil Code of the Russian Federation.
It is allowed to use a trademark with the alteration of some elements which does not influence its distinctiveness and does not limit the protection of the trademark.
Early cancellation of a trademark is a kind of civil sanction and is an effective measure preventing illegal and improper use of legally protected means of individualization of goods.
When a trademark becomes well-known
Any trademark can be cancelled early if it becomes well-known.
It happens quite often that goods marked by a certain trademark become very popular due to their high quality. The more popular such products become the more unfair competitors are trying to fake such products and sell them under the trademark which is used by the official manufacturer.
If the trademark holder does not prevent counterfeit production and does not protect his trademark then several manufacturers of one and the same product under the same trademark appear in the market. This leads to the fact that consumers perceive trademark as a kind of a certain product.
“Thermos” can be used as an example. It used to be registered as a trademark but now it is perceived solely as the product – a special container that keeps temperature of the product that was placed inside it.
If the trademark holder does not control the market and does not prohibit his trademark use then any interested person has the right to apply to Rospatent with the application to cancel early the legal protection of the trademark.
A trademark becomes well-known if a trademark is a specific designation which has been used for the identification of similar goods produced by different manufacturers. Consumers do not perceive this trademark as trademark of a certain manufacturer.