What should we take into account regarding the genuine use of a mark in the Andean Community?

Failure to make meaningful use of the trademark by its owner can have serious consequences. The most damaging is the declaration of lack of genuine use, which entails the declaration of invalidity of the mark and its corresponding cancellation as such in the register.

This is what happened recently with a Colombian trademark that the Colombian Superintendence of Industry and Commerce considered not to be used, in response to a cancellation action for non-use brought by a third party.

As we refer to the Andean Community, the rule to which the office applies is Decision 486 of the Common Intellectual Property Regime,Section 165. This article provides that a trademark may be canceled when it has not been used without just cause in (at least) one of the Member Countries during the three consecutive years preceding the date on which the action for cancellation is initiated.

Textually, it provides: “The competent national office cancels the registration of a mark at the request of an interested person, when without just cause the mark has not been used in at least one of the Member States, by its holder, by a licensee or by another person authorized to do so during the three consecutive years preceding the date on which the action for annulment is brought. Cancellation of a registration for non-use of the mark may also be requested as a defense in an opposition procedure filed on the basis of the unused mark.

Notwithstanding the provisions of the preceding paragraph, the action for nullity cannot be brought before the expiry of a period of three years from the date of notification of the decision which exhausts the registration procedure of the mark concerned. in the administrative procedure.

In this case, an action for invalidity is brought for non-use of a mark and the office analyzes all the variants or powers of this concept in order to assess whether this lack of use should actually lead to the cancellation of the distinctive sign. .

1. Compliance with the obligation to use the mark

Within this first faculty, there is two variants:

Positive: which refers to the possibility for the holder of the registration to use, transfer and license the sign; and

Negative: which refers to the possibility for the holder of the registration to prohibit unauthorized third parties from using the sign, as well as to oppose the registration of identical or similar signs.

2. Quantitative criterion and qualitative criterion for use of the mark:

In addition to the concept mentioned above, the quantitative and qualitative criteria for the use of the mark are also subject to analysis by the Superintendency. Thus, the resolution establishes parameters based on a decision of the Andean Community Court of Justice guide the determination of the use of the mark in the form and quantity specific to the nature of the goods or services it identifies, by virtue of which:

• “Registration obliges the holder of the mark to use the mark in at least one of the member countries. According to Article 166 of Decision 486, it follows that a trademark is in use when the products it distinguishes have been placed on the market or are available under the trademark, in quantity and in the manner normally corresponding, depending on the nature of the goods and the marketing methods, on the market of at least one of the Member Countries. According to the above provision, the presumption of use also exists when the mark distinguishes products intended exclusively for export from one of the member countries.

• the quantity of the good or service placed on the market in a way which normally corresponds to the nature of the good or service. This indicate is essential to determine actual use, since a few quantities of a mass-marketed product do not constitute proof of real and genuine use of the mark. In this respect, the competent National Office or the competent Judge, as the case may be, will have to determine whether the quantities sold in accordance with the nature of the product are only symbolic and do not prove the effective use of the mark.

• The quantity of the product or service placed on the market in the manner that normally corresponds to the regime under which it is marketed. In order to determine the real and effective use of the mark, account should be taken how the goods and services covered by the mark are marketed. It is not the same for a product marketed in supermarkets than for a product intended for specialized sectors and marketed in specialized stores, in catalogues, etc. “.

3. Time criterion

As already mentioned, the time criterion is three years. The action for cancellation of a trade mark can be crowned with success when it has not been used – without just cause – in one of the Member States during the three years preceding the date on which the action was brought.

Unlike, for example, what happens in Europewhen it is sufficient for non-use that the mark has not been used five years since its registration.

4. Burden of proof

Finally, the Office insists on the burden of proof of genuine use. According to Article 167 of the decision correspond to the owner of the mark, in the context of the action for cancellation brought against its registration. The Andean Community Court of Justice has also ruled on this issue, stating that:

“The proof of use of the mark, in essence, is limited to the concept of use and operationsince it is obvious that if he has carried out actions indicating that he has used the mark, he will have evidence relating to the different activities carried out under the mark, such as, for example, advertising, sale, etc.

The means of proof making it possible to establish that the mark has been used are recognized by Community law. In addition, these means of proof must correspond to the registered trademark”.

It is clear that it is not enough to have a mark and to register it. It must also be exploited commercially to last over time.

You can check out the full resolution here.