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Cancellation of mark and testing of use

  • 03 April 2014
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Where the use does not “fit” the norm who can save us?. National legislation varied relief mechanism for anyone who has a better right to a distinctive sign detailing.

If you appreciate someone filed an application for a similar mark or identical to ours, we oppose, If we see that someone uses a similar mark or identical to ours we can lodge a complaint for infringement of trademark rights, if a third party has registered a brand somewhere and not use it, can ask its cancellation and thus aspire to registration. If we analyze in detail our various legal devices, we find that, strictly, the law seeks to protect its brand which recorded always in a timely manner.

But what if the holder cannot demonstrate diligent brand your reason with the elements that the particular use of their brand offers, if who managed to register it, forge it in time and use it effectively, not strictly fit the norm or goes beyond understanding that the trademark examiner has established itself as” criteria?.

It sounds implausible, because they understand that if I have a registered trademark in use should be able to prove it to anyone and by any standard or course and if that use “there” in the real world, the trademark examiner should be able to adapt their trial reality and accept it as such. But incredible or not, this film does not always have a happy good because sometimes they do not win and the “criteria” become dogmas end.

Before reaching the end of history, and we’re going by review what notes the Decision No. 486 of the Andean Community of Nations Common Regime on Industrial Property (Decision No. 486), as a general rule:

“Article 165: The competent national office shall cancel the registration of a mark upon the request of any interested party when , without justification, the mark has not been used in at least one of the Member Countries , by the owner, by a licensee or by another person authorized to do so for three consecutive years preceding the date of the cancellation action starts. (…)”.

not having to argue your order, to request that a trademark is canceled, deleted or removed registry – so the possibility that anyone unexplained legitimized. This happens almost always, if not always, that this third person has an interest in the subsequent registration of the sign cancelable.

In case of fire, break glass and use the extinguisher. If this happens, the trademark holder must prove that is affected using the brand within 3 years prior to the date on which the cancellation action. This should be easy if the owner is using the mark, though often happens that many companies and individuals have little or no idea of how to correctly use the brand ( logos changed dramatically , bills have no details of their products or services, does not contain the holder’s name on them , etc). But do not talk about these cases that urgently need expert advice, but of those who, having a product or service unusual nature – are actually using the mark on the market, that place in their products, and then face the enormous seven-headed monster called “standard ” examiner.

Thus we have the same Decision No. 486 points when you might consider that a mark is in use:

“Article 166: It is understood that a mark is in use when the products or services distinguished by it have been put on the market or are available in the market under that mark, in the amount and manner as normal, due in the nature of the goods or services and the procedures under which marketing takes place in the market. ( … ) “(Emphasis added)

And what the tests are with CAN demonstrated this use, this course not limited to what is stated in the following article:

“Article 167: The burden of proof of use of the mark shall be the holder of record. The use of the trademark may be demonstrated by commercial invoices, accounting records or audit certificates that show the regularity and amount of marketing the goods identified by the mark, among others (…) “(emphasis added)

This standard offers alternatives (not rules) on how, who met to register your trademark, you can adapt your product or service sui generis to what the law requires: Simple proof of use. That is resulting all, to open wide the window of market realities to the trademark office.

Well, once reached this part of the movie, what should our trademark owner to prove use? The law suggests evidence such as invoices, accounting or audit documents, but are just that, suggestions, with the possibility of having other different elements that are appropriate to just how different the situation.

For example, if our brand is used for distinguishing clothing or pens used as merchandising, advertising is this use is disqualified as a real and effective use? Could our brand be considered as “not used” by the mere fact of not being associated with a product for mass distribution or exchanged for a monetary consideration?

Following this example, if a football match are donated and distributed to the public 100 coats containing a trademark, the reality is that the mark if it is used, as we can see on specific products within a sector specific market as well as maintaining a distinctive feature to all light, as it reports on the origin of products and unlike other similar or the same, but the approach taken by the examiner usually requires adjust inexplicable and illogical to the letter of the law, asking test necessarily a pecuniary linked to commercial use, although we have seen that the standard does not require it as such.

Before it What to do, Should inexorably disappearing all distinguishing marks used for advertising or other purposes unconventional products?, Does the owner of these can never protect their use and the consequent trade, economic and push effort invested them?, are these lost cases ahead? Does the use of a mark should only be linked to a purely monetary concerns end? Who can save us?

We believe that the competent authority must conduct an analysis ” above ” standard such situations , risking wild seas navigate and overcome the fear of the unknown, treating each case of this kind – as serious consequence by eliminating one registration trademark leaving it at the mercy of a third party on behalf of a preferential right legally acquired could not be a pirate – special and individualized manner, investigating the area of the relevant market, the particular of each situation and helping the owner use a registered mark under his rule keeps an element that meant and means effort, creation and investment too.

In the end, the dilemma created by a distant reality and little reasoned requirement falls on the shoulders both the trademark holder, which is drifting in that sea of uncertainty and unintelligible requirements; own advisors PI who must try to explain to customers this situation is drawn as surreal (and it is) and it sounds like a “this is and always will be ” no common sense and no defensible basis , and finally our very twisted legal system , which does not do any favors we cannot defend the rightful owner of a brand or get a happy ending.

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Cancellation of mark and testing of useCancellation of mark and testing of use