Someone registered your brand first: nullity for bad faith

The case, in five lines

What is brought

An action for absolute nullity of the registration on the ground of the applicant's bad faith, under article 51.1.b) of the Trade Mark Act, with the ownership claim of article 2.2 as an alternative where what you want is to keep the mark.

Before which court

The OEPM (the Spanish Patent and Trade Mark Office), where it is brought by direct application; the Commercial Section of the Tribunal de Instancia (the first-instance court), where it is brought as a counterclaim within an infringement action, or where the ownership claim is used.

Deadline

Article 51.2 declares the absolute nullity action imprescriptible, so there is no cut off date. The ownership claim under article 2.2 does have one: five years from publication of the registration or from when the mark began to be used.

Who can bring it

Under article 58.1.a), any natural or legal person, and also associations of manufacturers or traders and lawfully constituted consumer associations, that consider themselves aggrieved and have legal capacity to sue.

Financial risk

Before the OEPM the corresponding fee is paid and there is no costs order; in court there is, and the losing party usually bears the other side's costs. If nullity is refused by a final decision, article 61 bars raising the same ground again.

Bad faith is judged on the filing date, not on what came afterwards

Article 51.1.b) declares a registration null where, at the time of filing the application, the applicant acted in bad faith. The statute does not define that bad faith, and that is where the work of the case lies: what has to be shown is not the owner's later misconduct, but its state of knowledge and its intention on one specific date, the filing date recorded in the OEPM file.

That is why the whole evidential file is built backwards from that date. What matters is what came before: the orders, the invoices, the catalogues, the advertising, the contractual relationship between the parties, the talks about a licence that was never signed. And what matters just as much is what the owner did not have: no activity of its own under that sign, no use, no explanation of why it picked precisely that name for precisely those goods.

A parasitic registration also leaves a trail worth following. Whoever registers someone else's name rarely does it just once: the owner's other applications are checked, because a pattern of registrations covering third party signs it had previous dealings with says far more about its intention than any assertion made in the claim.

There is no clock running against bad faith, but there is one against your evidence

Article 51.2 is categorical: the action to seek absolute nullity of a registered mark is imprescriptible. Neither the passing of years nor the aggrieved party's tolerance cures a registration sought in bad faith, unlike what happens with other grounds of nullity. On paper, you can act today against a mark registered twelve years ago.

In practice, waiting is expensive. The evidence of earlier use decays on its own: websites change, emails are deleted when the provider is switched, old invoices are archived, witnesses leave the company and printed catalogues vanish. An imprescriptible action with dead evidence is worth nothing, and the registered owner defends itself precisely by saying that you never reacted.

There is also a period that does lapse, and it is usually the one that really matters to you. If what you want is not to destroy the mark but to keep it, article 2.2 requires the ownership claim to be brought before the date of registration or within the five years following its publication, or from when the registered mark began to be used. That one does run out.

Destroying the mark and keeping the mark are two different cases

Nullity under article 51 wipes out the registration, and with it the obstacle, but it hands you nothing: the sign becomes free again and anyone, the other side included, may apply for it once more. The ownership claim under article 2.2 does the opposite: where the registration was sought in fraud of a third party's rights or in breach of a legal or contractual duty, the aggrieved party claims ownership of the mark before the courts.

The difference shows in the effects. That same article 2.2 provides that, once the ownership claim is filed, the Court shall notify it to the OEPM so it is noted in the Trade Mark Register, and shall order, where appropriate, the suspension of the registration proceedings. And article 2.3 adds that, if the judgment changes ownership, licences and other third party rights are extinguished upon registration of the new owner.

The choice is not academic. If the name is your asset, if years of investment sit behind it and you do not want to go back to square one or risk a race to refile, the route is the ownership claim, and then the five year period governs everything else. If all you need is to lift the block so you can register a new sign yourself, nullity is enough.

By application to the OEPM, or waiting for them with a counterclaim

Article 51.1 offers two doors to the same action: an application filed with the OEPM, or a counterclaim within an infringement action. The first is used where the dispute has not yet reached court and what is urgent is to clear the Register. The second is the natural answer where the registered owner sues first and seeks to stop you selling.

Article 58 sets out how the application is filed with the Office: a reasoned and properly documented submission, treated as filed only once the corresponding fee has been paid. It may be directed against all or part of the goods or services for which the mark is registered, which fits article 51.4, limiting the declaration of nullity to the goods affected where the ground exists only for part of them.

Choosing the door is a strategic decision, not a matter of convenience. The Office route is cheaper and exposes you to no costs order, but it is decided on documents. The court route allows examination of parties, witness evidence and joining to the nullity any actions you hold against the owner, and it is the ground on which bad faith, a subjective fact, is best proved.

A final decision closes that ground of nullity for good

Article 61 stops the same card being played twice. Paragraph 1 obliges the courts to dismiss any counterclaim for nullity or revocation if the OEPM has already ruled, by a final decision, on an application with the same subject matter and the same ground between the same parties. Paragraph 2 does the mirror image: the Office will not admit the application where a final judgment or decision already exists.

Paragraph 3 closes the circle on the contencioso-administrativo side: anyone who was a party to an appeal decided on the merits by a final judgment may not afterwards apply to the OEPM or sue in the civil courts for nullity relying on the same ground. In other words, a badly prepared attempt is not merely lost: it burns the ground and leaves the other side's registration shielded against you.

How we run the case, step by step

1. 1

   Fixing the critical date and reconstructing the earlier use

   We obtain the file of the other party's mark to pin down the exact filing date and the classes covered, and reconstruct your own earlier use of the sign backwards with dated documents: invoices, catalogues, advertising, domains and market presence.

2. 2

   Establishing the registered owner's prior knowledge

   We gather everything proving the earlier relationship between the parties: distribution agreement, negotiation emails, orders, sales visits or corporate ties, and we review the same owner's other applications looking for a pattern of registering other people's signs.

3. 3

   Deciding between nullity and the ownership claim, and in which forum

   We match what you need against what each action delivers and against the deadlines: nullity does not lapse, the ownership claim does. At the same time we decide whether to apply to the OEPM or to wait and counterclaim within the infringement proceedings.

4. 4

   Filing the submission and carrying the burden of proof

   We file the reasoned and documented submission, with the fee paid, or the counterclaim. Bad faith is not presumed: every indication is anchored to a dated document and we explain why, taken together, only one reading is possible.

5. 5

   Enforcing the outcome in the Register and in the market

   Once nullity is declared or the ownership claim upheld, we take the decision to the Trade Mark Register, get the listing takedowns lifted in the sales channels, and assess claiming from the former owner for the harm its blocking caused you.

The law that applies

• Art. 51 Ley 17/2001 de Marcas. Lists the grounds of absolute nullity and the two routes for seeking it: application to the OEPM or counterclaim in an infringement action. The grounds are breach of article 5 and the applicant's bad faith when filing. It declares the action imprescriptible, prevents cancelling a mark that had acquired distinctive character through use as against the prohibitions in subparagraphs b), c) and d) of article 5.1, and confines nullity to the goods affected where the ground is partial. BOE-A-2001-23093
• Art. 2 Ley 17/2001 de Marcas. Provides that ownership of a mark is acquired by valid registration, and gives an ownership claim to the aggrieved party where the registration was sought in fraud of a third party's rights or in breach of a legal or contractual duty. It allows five years from publication of the registration or from when the mark began to be used, orders the claim to be noted in the Register, and provides that third party licences are extinguished when the new owner is recorded. BOE-A-2001-23093
• Art. 58 Ley 17/2001 de Marcas. Sets who may seek nullity or revocation before the OEPM: in the cases of articles 51 and 54.1, any natural or legal person, associations of manufacturers, producers, service providers or traders, and lawfully constituted consumer associations, that consider themselves aggrieved and have capacity to sue. It requires a reasoned and properly documented submission with the fee paid, and allows the application to target all or part of the registered goods. BOE-A-2001-23093
• Art. 61 Ley 17/2001 de Marcas. Allocates the effect of what has already been decided between the OEPM and the courts. The courts dismiss a nullity or revocation counterclaim if the Office already ruled by a final decision on the same subject matter and ground between the same parties, and the Office will not admit an application where a prior final judgment or decision exists. Moreover, a party to a contencioso-administrativo appeal decided on the merits cannot reopen the same ground of nullity. BOE-A-2001-23093
• Art. 5 Ley 17/2001 de Marcas. Contains the absolute grounds for refusal to which article 51.1.a) refers: signs devoid of distinctive character, descriptive or customary in trade, shapes imposed by the nature of the product or giving it substantial value, signs contrary to law, public policy or accepted principles of morality, signs deceptive as to nature, quality or origin, and those clashing with designations of origin, geographical indications, plant varieties, flags and official emblems. Its paragraph 2 saves the registration if the sign acquired distinctiveness through use before grant. BOE-A-2001-23093

Each article checked against the consolidated text published in the BOE (the Spanish official gazette).

Frequently asked questions