Here is a list of circumstances under which a trademark and the rights which it incorporates can be cancelled that could provide as a pointer to things to watch out for or fulfill. Rights on a trademark may be extinguished through either one of three ways. The owner may, in a written statement submitted to the office renounce his rights under the trademark, a trademark which, without just cause, has not be used may be cancelled upon application or a trademark may be invalidated where it has subsequently been discovered not to have fulfilled the primary requirements for certification when it was granted.
The owner renouncing his right shall in the written application state clearly the rights he wishes to renounce and in respect of which goods and services he wishes to surrender his rights. If the trademark is subject to a license, since his rights are affected by doing so, written consent has to be submitted by the licensee for it to be approved by the office. An approved renunciation is either published or broadcasted by the office to notify the public.
A trademark can be the object of a cancellation if after its release or during the period it is functional, it has not been used for three consecutive years. Cancellation has to be initiated by an interested party who will submit a written application to the office. During examination of the claim the court shall accept as a valid defense proof that the reason for non use was force majeure (circumstances beyond the owner’s control). A trademark shall also not be cancelled if the owner used such trademark without the minor details that do not affect its distinctive character.
A trade mark may be invalidated upon request or at the initiative of the office. Where the office considers invalidation, it shall inform the owner of its decision and the reasons thereof. Invalidation may affect the whole trademark or rights incorporated within and an invalidation effected thereof shall be effective from the day of certification and registration and the office shall publish such invalidation. If a trademark hence invalidated was the object of a license, the licensee may not demand his money back. The law implies that such licensing contract will be terminated and his remedy under the law will be to claim damages.
The office shall in all the above cases, consider upon and grant a period of time for the parties if it feels it will help remedy the situation. Such extension of time may be granted even if the time for doing the act has already expired.
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