Removing someone else’s trademark from the register: through the trademark office or the court?

Suppose you designed a logo together with a former business partner, but now that person has registered it as a trademark in their own name, even though you had clearly agreed that the logo would belong to you. Or perhaps you want to use a trademark that someone else once registered, but which has not been used for more than five years. What can you do if you cannot reach an agreement?

In this article, I explain how you can have a trademark removed from the register, also known as “cancellation”. I discuss in which situations this can offer a solution and when it is wise to go to the trademark office or to court.

Do you have a dispute about a trademark that is still in the application phase? Then opposition proceedings may offer a solution. You can find more information about this in my previously published article: Opposition or civil proceedings: which route is right for your trademark dispute?

Where can you go in the event of a trademark dispute?

If you have a dispute about a trademark registration and you cannot reach a solution with the trademark owner, you have two options:

1. The trademark office: You can initiate proceedings at the trademark office where the trademark is registered. For Benelux trademarks, this is the Benelux Office for Intellectual Property (BOIP). For European trademarks, this is the European Union Intellectual Property Office (EUIPO).

2. The civil court: You can also go to court.

The best route to take depends on what you want to achieve. Do you just want to have someone else’s trademark removed from the register? Then the trademark office is often the quickest and easiest route. Do you also want the other party to stop using the trademark and/or pay compensation? Then legal proceedings are probably a better option.

What are cancellation proceedings?

A cancellation procedure is a procedure at the Trademark Office in which you claim that a trademark is invalid (void) or has expired. You then request the Trademark Office to remove the trademark from the register in whole or in part. You can submit such a request if, for example:

• the trademark is actually too descriptive (and therefore cannot be a real trademark);
• the trademark has been registered in bad faith;
• the trademark has not been used for five years; but also if
• the trademark conflicts with your older trademark or trade name.

Even if you did not file an opposition against the registration of the trademark in time, you can still initiate cancellation proceedings.

How does a cancellation procedure work?

You can submit a request to the Trademark Office to cancel a trademark at any time. The Trademark Office will first check whether your request meets the requirements and then forward it to the trademark holder. Both parties will then have the opportunity to explain their positions. The Trademark Office will then assess the substance of the case and decide whether to remove the trademark from the register in whole or in part. If you disagree with this decision, you can appeal.

How long does a cancellation procedure take?

A cancellation procedure at the Trademark Office is usually faster than substantive proceedings in court. The average duration of a cancellation procedure is between 9 and 21 months. The exact duration of the procedure depends on various factors, such as the complexity of the case, any requests for postponement by the parties, or the temporary suspension of the procedure in order to reach a joint solution.

Although summary proceedings before the civil court may be faster, they are not a suitable alternative in this context. In summary proceedings, the court can only take provisional measures and cannot impose a definitive cancellation of a trademark. Such a decision requires extensive proceedings on the merits. That is why invalidity proceedings at the Trademark Office are often the most efficient route.

Please also read my previously published article for more information about interim relief and proceedings on the merits before the civil court.

When is it better to go to the civil court?

If a trademark not only causes problems in the register, but you also want to stop its actual use in the market, civil proceedings before the court may be a more suitable option. Before the court, you can not only request that the trademark be removed from the register, but also demand that the other party stop using the trademark and, if necessary, pay you compensation.

Seek help from a specialist

In practice, choosing the right approach to a trademark dispute is often not easy. Sometimes a combination of different procedures is most effective. For example, it may be wise to first have the validity of a trademark assessed by the trademark office through invalidity proceedings before going to court.

Because every case has its own deadlines, formalities and strategic choices, expert guidance is important. A trademark lawyer will clearly map out your position and that of your opponent, advise you on the most promising route to take, and can conduct the proceedings before the Benelux Office, the EUIPO and the civil court.