What should we take into account in relation to genuine use of a trademark in the Andean Community?

April 2022

Not put the trademark to genuine use by its proprietor can have serious consequences. The most damaging is the declaration of lack of genuine use, which entails the declaration of invalidity of the trademark and its corresponding cancellation as such in the Register.

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

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

Textually, it provides: “The competent national office shall cancel the registration of a mark at the request of an interested person, when without proper reasons the mark has not been used in at least one of the Member Countries, by its proprietor, by a licensee or by another person authorized to do so during the three consecutive years preceding the date on which the cancellation action is initiated. Cancellation of a registration for non-use of the mark may also be requested as a defense in opposition proceedings brought on the basis of the unused mark.

Notwithstanding the provisions of the previous paragraph, the cancellation action may not be initiated before three years have elapsed from the date of notification of the decision that exhausts the registration procedure of the respective trademark in administrative proceedings”.

In this case, a cancellation action is filed for non-use of a trademark and the office analyses all the variants or powers of this concept in order to assess whether this lack of use should indeed lead to the cancellation of the distinctive sign.

1. Fulfilment of the obligation to use the trademark

Within this first faculty, there are two variants:

Positive: which refers to the possibility that the proprietor of the registration has to use, transfer and license the sign; and

Negative: which refers to the possibility that the proprietor of the registration has 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 of use of the trademark:

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

  • “Registration requires the trademark proprietor 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 goods distinguished by it have been put on the market or are available, under the trademark, in the quantity and in the manner normally corresponding, according to the nature of the goods and the methods of marketing, on the market of at least one of the Member Countries. According to the above provision, the presumption of use also arises when the mark distinguishes goods which are intended exclusively for export from any of the Member Countries.

  • The quantity of the goods or service placed on the market in a manner which normally corresponds to the nature of the goods or services. This point is essential to determine actual use, since a few quantities of a product that is mass-marketed are not proof of real and genuine use of the mark. In this regard, 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 merely symbolic and do not prove actual use of the trademark.

  • The quantity of the product or service placed on the market in the manner which normally corresponds to the arrangements under which it is marketed. In order to determine the real and effective use of the mark, account must be taken of how the goods and services covered by the mark are marketed. It is not the same for a product marketed in chain supermarkets as it is for a product for specialized sectors and marketed in specialized shops, in a catalogue, etc.”.

3. Time criterion

As we have already mentioned, the temporal criterion is three years. The action for cancellation of a trademark may be successful when it has not been used -without proper reasons- in any of the Member States during the three years preceding the date on which the action is filed.

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

4. Burden of proof

Finally, the Office stresses the burden of proof of genuine use. According to Article 167 of Decision correspond to the trademark proprietor, within the cancellation action brought against its registration. The Court of Justice of the Andean Community has also ruled on this issue, stating that:

“The proof of the use of the trademark, basically, is limited to the concept of use and exploitation, since, it is evident that if it has exercised actions that indicate that it has used the trademark, it will have the evidence related to different activities carried out under the trademark, such as, for example, advertising, sales, etc.

The means of proof to show that the trademark has been used are recognized in Community law. Furthermore, these means of proof must correspond to the registered trademark”.

It is clear that it is not enough to have a trademark and register it. It is also necessary to exploit it commercially in order to perdure in time.

You can review the complete resolution here.

Eduardo Zamora | Sara del Río