21 November 2012Jurisdiction reports

Use it or lose it

Articles 165 to 170 of Decision 486, under the Common Regime of Industrial Property of the Commission of the Andean Community, state that a partial cancellation occurs when a trademark is not being used in relation to all the products or services for which it was granted. In these cases, the mark ceases to cover these products or services, and just covers the goods or services whose use is proven. A complete cancellation affects all products or services protected by the mark.

To prove non-use, the trademark must not have been used by its owner or licensee in Peru or any other member of the Andean Community for three consecutive years, unless there is a reasonable excuse.

To avoid either partial or complete cancellation, the owner must demonstrate the use of the mark in Peru or in any other country of the Andean Community, through commercial invoices, publicity, catalogues, accounting documents or audit certificates that show the continuity and the quantity of merchandise commercialised under the registered brand.

“To avoid either partial or complete cancellation, the owner must demonstrate the use of the mark in Peru or in any other country of the Andean Community, through commercial invoices, publicity, catalogues, accounting documents or audit certificates that show the continuity and the quantity of merchandise commercialised under the registered brand.”

It is worth highlighting an INDECOPI resolution concerning a cancellation case filed by Import y Export Gold Sun SAC. This case concerned the Binbin brand, owned and registered under certificate by Peruvian company Krisper Import SRL for goods in class 16 and valid to August 10, 2016. The INDECOPI Office of Distinctive Signs based its decision on Article 165 of the Decision of the Andean Community, pointing out that the evidence filed was not enough to demonstrate the use of the trademark in the way that it was registered; that is, with an irregular device and the combination of colours: red, orange, white, black and green. The evidence submitted included contracts for the commercialisation and distribution of the trademark ‘Binbin’ as well as sales invoices that proved the trading of goods in class 16, such as school scissors, staplers, pens, a highlighter and erasers under the Binbin mark.

Given this, it makes sense for companies looking to ensure their marks are in use to place the protected logo in the background of the sales invoices. This avoids the risk of INDECOPI cancelling the registration, because its criterion for accepting the use of a mark is that the brand appears on the invoice in the same way that it was registered.

However, even if the logo is not on the sales invoice, it is still possible to demonstrate use by putting the product code on the invoice, as long as the respective catalogue entry with the correct branding is available. Finally, when the correct evidence is not available, the best option is to re-register the brand to ensure that the owner does not lose the right to all the products and/or services that need protecting.

Ana Delion is a manager at Estudio Delion. She can be contacted at: anacd@estudiodelion.com.pe

Virginia C. Delion is a partner and public relations manager at Estudio Delion. She can be contacted at: vcd@estudiodelion.com.pe

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