According to the European Trademark Directive, as well as the Community Trademark Regulation, a trademark shall be liable to be declared invalid if it is found to be contrary to public policy or accepted principles of morality even several years after the trademark application. In this case, the Community trade mark shall be considered not to have had any legal effect from the very beginning. In other words, the invalidity declaration has an “EX TUNC” retroactive effect (absolute). However, the Trademark Regulation does not allow a trademark to be just “revoked” when it is found to be contrary to public policy or accepted principles of morality. A revocation action, in this case, would have limited effects if compared to the invalidity declaration: the trademark would be deemed not to have had any legal effects as from the date of the application for revocation and not from the very beginning (the trademark application). This is the so called “EX NUNC” retroactive effect (limited in time): some legal effects are still kept in the benefit of the trademark owner. Having said that, nowadays, in our fast-changing globalized society, a perfectly “neutral” name or expression can become “problematic” after specific events ( e.g., the name “Bin Laden” after the twin tower attacks, or the name “Charlie Hebdo” the day after the attacks in Paris). So the question is: why, in these specific cases, the owner of a trademark must be deprived of its trademark rights with an absolute retroactive effect (“ex tunc”), when the reason for cancellation has appeared only after the trademark filing? Wouldn’t be appropriate to also allowing a revocation action in order to guarantee rights in a trademark that, at the moment of the filing, was not yet immoral or contrary to public policy? Comments and thoughts will be appreciated.
