EU Trade Mark Invalidity: Grounds Under Articles 59–60 EUTMR

A declaration of invalidity of an EU trade mark means that the mark is deemed never to have had the legal effects provided for under the EUTMR from the outset — unlike revocation for non-use, which as a general rule terminates those effects only from the date on which the relevant application is filed. This difference in the moment at which consequences arise — not merely the terminology — determines which procedure to choose and what can actually be achieved as a result.

Regulation (EU) 2017/1001 divides the grounds for invalidity into two categories with fundamentally different underlying logic: absolute grounds (Article 59 EUTMR) concern a defect in the sign itself, while relative grounds (Article 60 EUTMR) concern a conflict with an earlier right of a third party. The category to which a ground belongs determines both the circle of persons entitled to file an application and whether the acquiescence limitation may apply.

Absolute Grounds: A Defect Present from the Examination Stage

Absolute grounds for invalidity essentially mirror the grounds for refusal of registration under Article 7 EUTMR — except that they are identified only after EUIPO's examination missed them. Article 59(1)(a) EUTMR refers to Article 7 EUTMR as a whole, not to a closed list. Such grounds include, in particular:

• absence of distinctive character;
• descriptiveness in relation to the goods or services;
• deceptive character of the sign.

This is not an exhaustive list: depending on the circumstances, other grounds under Article 7 EUTMR may also apply — from conflict with public policy or accepted principles of morality to conflict with protected emblems, geographical indications, or traditional terms.

Bad faith at the time of filing (Article 59(1)(b) EUTMR) stands separately. It is assessed by reference to all relevant circumstances at the time of filing and is not reducible to a single specific intention; one possible manifestation is filing an application with the aim of blocking another party's sign or obtaining an exclusive right contrary to the purposes of the trade mark system.

An important nuance that is frequently overlooked: where a mark was registered in breach of Article 7(1)(b), (c), or (d) EUTMR — that is, for lack of distinctive character, descriptiveness, or genericness — but has subsequently acquired distinctive character through genuine use after registration, Article 59(2) EUTMR allows it to be preserved. This is not a universal mechanism for "curing" any absolute ground — the rule applies only to these three specific cases.

An application on absolute grounds, as with revocation for non-use, may be filed by any natural or legal person, and by any group or body set up to represent the interests of manufacturers, providers of services, traders, or consumers that has the capacity to sue and be sued (Article 63(1)(a) EUTMR). There is no need to demonstrate a commercial interest.

Relative Grounds: Where the Proprietor of an Earlier Right Challenges the Registration

The logic here is different. Relative grounds (Article 60 EUTMR) operate where a registered mark conflicts with an earlier right already acquired by a third party: an earlier trade mark — in particular where a likelihood of confusion exists, or, for a mark with a reputation, where use of the later mark without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier mark; a right to a name; a right to a personal image; copyright; or another industrial property right. The range is broader than the typical "similarity of two logos" scenario — it encompasses conflicts with trade names and with copyright-protected works depicted on packaging.

Unlike absolute grounds, the circle of applicants here is limited. Where the conflict involves an earlier trade mark (Article 60(1)), the application may be filed by the persons referred to in Article 46(1) EUTMR — as a rule, the proprietor of the earlier right. Where other earlier rights are invoked (Article 60(2)), the application may be filed by the proprietor of the relevant right or by the person authorised under EU or member state law to exercise that right (Article 63(1)(b)–(c) EUTMR). A third party who has merely noticed the conflict does not have locus standi to file such an application.

For certain relative grounds, the acquiescence limitation under Article 61 EUTMR also applies — but not universally. Where the proprietor of an earlier EUTM (Article 61(1)) or, under the conditions set out in Article 61(2), the proprietor of an earlier national mark or other earlier sign under Article 8(4), knowing of the use of a later EUTM, has acquiesced in that use for five consecutive years, they lose the right to seek invalidity of the later mark on the basis of that earlier right — in respect of the goods or services for which the later mark has actually been used. The exception is where the application for the later EUTM was filed in bad faith. This limitation does not extend automatically to all grounds under Article 60(2) — for example, it does not apply to copyright or rights to a name.

Procedure: Application to EUIPO or Counterclaim Before a Court

An invalidity application is filed with the EUIPO Cancellation Division. The official fee is €630 regardless of the number of grounds relied upon (verified against official EUIPO materials as of September 2026) — both absolute and relative grounds for invalidity may be relied upon simultaneously in a single application, with only one fee payable. Invalidity and revocation nonetheless remain separate procedures: where an applicant wishes to rely on grounds of invalidity and grounds of revocation in the same application, both corresponding fees must be paid; EUIPO also provides separate forms for each procedure.

The second route is a counterclaim in infringement proceedings before an EU trade mark court. A proprietor accused of infringement may challenge the validity of the claimant's sign in those same proceedings, without filing a separate application with EUIPO. The logic and timelines for challenging an EUIPO decision are the same as for other first-instance decisions — for more detail, see our article on appeals at EUIPO.

Consequences: Why the Timing Matters — and Where the Limits of Retroactivity Lie

Article 62 EUTMR establishes different temporal effects for the two procedures. A mark declared invalid is deemed never to have had any legal effects under the Regulation from the outset — that is, the effect operates ex tunc (Article 62(2)). Revocation operates differently: as a general rule, the rights are deemed not to have had the relevant effects from the date on which the revocation application was filed, although at the request of a party the decision may specify an earlier date on which the ground for revocation arose (Article 62(1)).

The retroactive effect of invalidity is not absolute, however. Article 62(3) EUTMR expressly provides for exceptions: it does not affect final and already enforced decisions on infringement, or contracts concluded before the invalidity decision, to the extent that they have already been performed. In individual cases, questions may arise regarding repayment of amounts paid under a contract on grounds of equity, as well as claims for compensation for loss caused by negligence or bad faith on the part of the mark's proprietor, or for unjust enrichment — governed by the applicable national law.

How This Differs from Opposition and Refusal of Registration

Opposition and invalidity are frequently confused, although they concern different stages in the life of an application. A third-party opposition against registration of an EUTM is available only within the three-month window following publication of the application — before registration. Invalidity, by contrast, concerns an already registered mark: there is no general time limit for filing an invalidity application, although in relation to certain earlier marks and signs the five-year acquiescence limitation under Article 61 EUTMR may apply.

There is also a connection with refusal at the examination stage: the same absolute grounds under Article 7 EUTMR that may lead to refusal of a pending applicationcan "catch up" with a sign even after successful registration — simply through the invalidity procedure rather than an examination objection.

Недійсність проти анулювання: практичне порівняння

What to Do If an Invalidity Application Has Been Filed Against Your Mark

The time to respond is before the deadline set by EUIPO for the reply — not after. The evidence required depends on the specific ground relied upon in the application rather than on a universal checklist. In a dispute on absolute grounds, what matters is the state of the sign as at the date of the original filing; where the proprietor of the contested mark intends to rely on Article 59(2) EUTMR, evidence of the use through which the mark acquired distinctive character after registration will be needed. In a dispute on relative grounds, the earlier right must be analysed — its existence and scope of protection — and where the application is based on an earlier trade mark, it should be assessed whether the proprietor of the contested EUTM can require the applicant to provide proof of genuine use of that earlier mark. It is also worth assessing separately whether the five-year acquiescence period under Article 61 EUTMR has run.

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The assessment of the prospects of any specific invalidity application always depends on the factual circumstances and the available evidence — there are no universal guarantees of outcome. If an invalidity application has been filed against your mark, or if you are considering challenging another party's registration, Dr. Emil Benatov & Partners advises on preparing a position and managing the case before EUIPO.