Cancellation Actions Due To Non Use Of Trade Marks
(Lima, Peru, June, 2020) Andean Community (Formerly Andean Pact) Decision 486, that is in force in Peru since December 1st, 2000, is the Industrial Property law applicable individually in Bolivia, Colombia, Ecuador and Peru, and although this Decision 486 states that no evidence of use is required for purposes of a trade mark renewal, the obligation to show the use of trade marks still continues when Decision 486 establishes the possibility of a cancellation action due to non use of a trade mark if it has not been used in the Andean Community during three consecutive years before the beginning of the cancellation action.
Andean Community Decision 486 states that a cancellation action cannot be started before the three years term, counted as from the date of notification of the resolution with which the proceeding of the registration of the trade mark in the administrative level finishes.
The cancellation action for lack of use is started by the interested party, and it may be filed as an independent proceeding or may be part of a defense of a trade mark application in an opposition based on a trade mark that has not been used in the Andean Community countries, namely, Bolivia, Colombia, Ecuador and Peru.
The use in any of the four Andean Community countries by either its proprietor or its lawful licensee or another person who is authorized to use the trade mark, eliminates the possibility of this action.
A trade mark can be fully or partially cancelled due to lack of use.
The full cancellation action for lack of use refers to a full cancellation or total obliteration of a trade mark certificate as a whole, while the partial cancellation refers to the cancellation of one or several goods or services of the list of coverage, for which use cannot be shown.
Therefore, adding goods or services is free and open, but keeping those goods or services requires use of each good or service in any of the Andean Community countries.
If the trade mark has not been used, it is possible to file a new trade mark application showing the trade mark in a different fashion, for example with or without a logo, so that when use of the trade mark cannot be shown, the new registered trade mark with a variation from the original registration could eventually prevail.
The following shall be accepted as evidence to show the use of the trade mark:
- Invoices that show the regularity and the quantity of the commercialization at least during the year prior to the date when the cancellation action for non use of the trade mark is started.
In the cases where invoices containing codes are submitted, it will be necessary to file the list of such codes showing the code corresponding to the goods protected by the trade mark. A statement, declaration or affidavit signed by the representative officer of the company, regarding the use of a code system, is not necessary but it would be convenient, and such declaration of affidavit should contain notarial and Peruvian consular legalization.
- The list of merchandise identified with the trade mark which existence is certified by an auditor’s office that shows regularity in production or in sales, at least during the year prior to the date when the cancellation action for non use of the trade mark is started.
- Documents showing the exportation of the goods under cancellation from Peru or from any other country member of the Andean Community, namely Bolivia, Colombia and Ecuador, during the three years prior to the starting date of the cancellation action.
- Any other way of proof allowed by the law of the member country where the cancellation is filed.
- We think that the requirement to submit documents that have been issued one year before the date when the cancellation action is started, to show the use of the trade mark, is excessive, and we believe that it should not be taken literally, although it should be followed as closely as possible.
We can separate the value of the evidences of use in two categories, namely, major and additional:
- Major evidence: such as invoices or bills of lading. The value of this evidence is high because it shows that the goods enter the Peruvian market. Another major evidence could be the original publications of the newspaper or magazine in full, with all its pages, one of which must show an advertisement of the trade mark.
- Additional evidence: such as affidavits from distributors and/or owners of the trade mark, brochures, catalogues, pamphlets, annual reports, surveys among the consumers about the trade mark, documents to show awards, prizes, medals, diplomas, decorations or any other honor or evidence of good reputation of the trade mark.
May we add that the Free Trade Agreement between the United States and Peru has already been signed by the U.S. President, on December 14, and such Free Trade Agreement will become in force in January 2009. Meanwhile, Peru must update its legislation and sign different international agreements, among which we hope that harmonization of documents is included, and thus we will then be able to overcome many problems in document legalizations.
The Peruvian Patent and Trade Mark Office itself has been changing its criteria when analyzing documents executed abroad, and have been accepting simple copies of documents executed abroad when they are filed as evidence in an opposition or a cancellation action: however, we prefer to have the documents legalized up to the Peruvian consulate in case the Peruvian Patent and Trade Mark Office makes a sudden change of opinion, but in the meantime, you could send to us simple copies or photocopies.
The burden of proof of use of the trade mark will correspond to the owner of the trade mark certificate of registration.
A certificate of registration will not be cancelled when the owner of the trade mark shows that the lack of use was due to force majeure, fortuitous event (act of God) or to import restrictions or other official requirements applied to the goods and services protected under the trade mark.
It is understood that a trade mark is in use when the goods or services covered by the trade mark have been introduced in the market, or are available in the market under the trade mark in question in the quantity and mode that normally corresponds, taking into consideration the nature of the goods or services and the modalities under which the commercialization in the market is performed.
Also, a trade mark is considered in use when it distin-guishes, exclusively, goods for exportation from any of the member countries, as provided in the previous paragraph.
The use of a trade mark in such a mode that differs from the form in which it was registered only in what regards details or elements not changing its distinctive character, shall not be the cause for cancellation of the certificate of registration for lack of use, nor shall impair the protection corresponding to the trade mark.
There are two cases that are not specifically considered in the law, and that are therefore subject to interpretations:
- The use in another class:
Peruvian laws that were in force before Andean Community Decision 486, required to show the use of a trade mark for renewals, and established that the use of the main trade mark was sufficient evidence to ask the renewal of derivate trade marks: this was then broadened by way of interpretation to understand that the use of the trade mark in one class was sufficient to show the use of the trade mark for purposes of renewal in other classes. However, we could not apply this interpretation to the filing of evidences of use of a trade mark, in one class, because the use must be showed for each good/service covered by the trade/service mark in the corresponding class.
There are few cases in which the goods/services in one class are very similar to the goods/services in other classes, and in such cases, the Peruvian Patent and Trade Mark Office could eventually allow the use of the trade/service mark in one class to prove the use of the same trade/service mark in other classes, such as for instance “disposable diapers of paper”, in class 16, with “napkins for incontinents”, in class 5, but we cannot assure you this because it will depend on the Peruvian Patent and Trade Mark Office criteria when analyzing evidences of use.
- Worldwide well-known trade marks:
In the case of worldwide well-known trade marks, we may interpret that the protection that Decision 486 gives to worldwide well-known trade marks is stronger than the possibility of cancellation action due to lack of use; and for this reason, our opinion is that a worldwide well-known trade mark remains protected even without use or registration in the Andean Community, but it will be necessary to show such quality of worldwide well-known of the trade mark in question in the eventual case of a cancellation action for lack of use.
Pierola & Asociados