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be revoked on application to the Agency or on the basis of a counterclaim in
infringement proceedings, where any of the following conditions is fulfilled:
(a) the proprietor no longer meets the requirements of Article 74b(2);
(b) the proprietor does not take reasonable steps to prevent the mark being used in a
manner incompatible with the conditions of use laid down in the regulations
governing use, amendments to which have, where appropriate, been mentioned in
the Register;
(c) the manner in which the mark has been used by the proprietor has caused it to
become liable to mislead the public in the manner referred to in Article 74d(2);
(d) an amendment to the regulations governing use of the mark has been mentioned in
the Register in breach of Article 74f(2), unless the proprietor of the mark, by
further amending the regulations governing use, complies with the requirements of
that Article.
xi. Grounds for invalidity
Article 74j provides that in addition to the grounds for invalidity provided for in
Arts 52
148
6.142
and 53,
149
a European certification mark which is registered in
2.
Where the grounds for revocation of rights exist in respect of only some of the goods or services for
which the Community trade mark is registered, the rights of the proprietor shall be declared to be
revoked in respect of those goods or services only.
148
Article 52, which is concerned with absolute grounds for invalidity, provides:
1.
A Community trade mark shall be declared invalid on application to the Office or on the basis of a
counterclaim in infringement proceedings:
(a)
where the Community trade mark has been registered contrary to the provisions of Article 7;
(b)
where the applicant was acting in bad faith when he filed the application for the trade mark
2.
Where the Community trade mark has been registered in breach of the provisions of Article 7(1)(b), (c)
or (d), it may nevertheless not be declared invalid if, in consequence of the use which has been made of
it, it has after registration acquired a distinctive character in relation to the goods or services for which it
is registered.
3.
Where the ground for invalidity exists in respect of only some of the goods or services for which the
Community trade mark is registered, the trade mark shall be declared invalid as regards those goods or
services only.
149
Article 53, which is concerned with relative grounds for invalidity provides:
1.
A Community trade mark shall be declared invalid on application to the Office or on the basis of a
counterclaim in infringement proceedings:
(a)
where there is an earlier trade mark as referred to in Article 8(2) and the conditions set out in
paragraph 1 or paragraph 5 of that Article are fulfilled;
(b)
where there is a trade mark as referred to in Article 8(3) and the conditions set out in that
paragraph are fulfilled;
(c)
where there is an earlier right as referred to in Article 8(4) and the conditions set out in that
paragraph are fulfilled.
2.
A Community trade mark shall also be declared invalid on application to the Office or on the basis of a
counterclaim in infringement proceedings where the use of such trade mark may be prohibited
pursuant to another earlier right under the Community legislation or national law governing its
protection, and in particular:
