You can use a cancellation procedure to ask BOIP to remove a registered trademark from the register. Cancelling a trademark may help to resolve trademark conflicts, but also to remove unused or non-distinctive trademarks from the register. More information about trademark infringements
Situation 1: You are the applicant
As a trademark owner (holder), you can institute a cancellation procedure against the registration of an identical or strongly similar later trademark that has been applied for in respect of the same or similar products and services as those for which your own trademark has been registered. You are the applicant.
You can also start a cancellation procedure without being a trademark owner (holder). Example: You can search our Trademark Register to see if your sign is still available for registration as a trademark. If you find a registered trademark that you suspect is no longer being used, or that you feel is not distinctive, you can start a cancellation procedure with BOIP.
Unlike in the case of opposition, there is no time limit for starting the procedure; it can be started at any time.
Situation 2: You are the defendant
As the holder of a trademark registration you could also face with a procedure for the cancellation of your trademark by another party. In that case you will be the defendant. More information about cancellation of your trademark
In either situation, an external IP professional will be able to guide and advise you. A cancellation procedure is a complex legal process. It is important to go through this process carefully and correctly.
When can a cancellation procedure be initiated?
You can start a cancellation procedure as trademark holder if:
- an identical trademark has been filed in respect of the same products or services;
- an identical or similar trademark has been filed for the same or similar products or services if there is a likelihood of confusion on the part of the public;
- an application has been filed for an identical or similar trademark for other products or services, taking unfair advantage of or infringing the distinctiveness or the reputation of the existing trademark;
- a later trademark may cause confusion with a well-known trademark as referred to in Article 6bis of the Paris Convention.
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You can also start a cancellation procedure without being a trademark owner if:
- The trademark is descriptive
- The trademark is not distinctive
- The trademark is misleading
- The trademark contains a flag, coat of arms or any other official emblem of a State or an international organisation that is protected under Article 6ter of the Paris Convention
- The trademark infringes other intellectual property laws, such as design and patent laws. The law frames this as follows: a shape or another characteristic of a product (for example a sound) cannot be a trademark if it (1) is determined by the nature of the goods, (2) gives substantial value to the goods, or (3) is necessary to obtain a technical result. In many cases, such a shape or other characteristic also lacks distinctive character;
- The trademark is contrary to public order and morality
- The trademark has not been used normally for a period of five years;
- The trademark refers to a protected geographical indication, traditional term for wine, or traditional speciality guaranteed;
- The trademark is very similar to a protected, earlier plant variety denomination;
- The trademark was applied for in bad faith;
- The trademark application was filed by an agent (a representative) in his or her own name without the authorisation of his or her client (proprietor of the trademark).
You can only ask BOIP to cancel a Benelux trademark or an international trademark with protection in the Benelux. An application for the cancellation of a European Union trademark must be addressed to EUIPO. Visit the EUIPO website
How does the cancellation procedure work?
Starting up and going through a cancellation procedure is a complex legal process. There are also costs involved. It is therefore important to go through this procedure carefully and correctly. An expert in the field of intellectual property, for example an IP professional, can attend to this for you. More information about the cancellation process being started by IP professionals
Minimum requirements
We will not be able to process your application for cancellation until it has been paid for.
You must also clearly indicate when submitting the request for cancellation:
- Who is the applicant? This can be either a physical person or a company. You can also start a cancellation procedure if you have a licence to a trademark. You will need permission from the owner (holder) of the trademark. Your details must correspond precisely to those given in the register;
- The trademark for which cancellation is requested;
- The reason or reasons for requesting cancellation.
Decision
Once we have examined a request for cancellation, a decision will be taken as soon as possible.
Possible outcomes
1. The applicant is vindicated.
- Has the applicant been fully vindicated? In that case the trademark is removed from the register or cancelled for those products and services for which the applicant has requested cancellation. In this case, the defendant pays the applicant the basic fee of the cancellation procedure (1, 420 euros);
- Has the applicant been partially vindicated? In that case, the defendant's trademark remains in the register for only some of the products and services. No payment is made between the two parties.
2. The defendant is vindicated.
- Has the applicant been fully found against? In that case we will turn down the cancellation request and the defendant's trademark will remain in the register. The applicant pays the basic fee of the cancellation procedure (1,420 euros) to the defendant;
- Has the applicant been partially vindicated? In that case, the defendant's trademark remains in the register for only some of the products and services. No payment is made between the two parties.
The parties arrange for the payment of the sum of 1,420 euros between themselves; this is not done via BOIP. The order for costs is enforceable or, which means that a bailiff may execute BOIP's decision to cancel and collect payment on behalf of the applicant or defendant on the basis of the decision.
