NEW CRITERIA FOR THE PARTIAL CANCELLATION OF A TRADEMARK DUE TO LACK OF USE
According to Article 165 of Decision 486, it is possible to cancel the registration of a trademark due to lack of use when it has not been used in the market by its owner or licensee within the prior three years to the action filing date. It is important to note that the Trademark Office may order the partial cancellation if it considers that the lack of use only affects certain products or services.
Regarding partial cancellations, INDECOPI has warned that products or services belonging to the same gender are not necessarily similar or related. Consequently, the evidence use provided by the owner must be taken into account since proven use will not be automatically extended to products or services of the same gender.
According to INDECOPI, the interpretation of the Andean legislation is limited to the proven use of products or services and does not include similar ones. The above modifies the criteria in Resolution No. 1183-2005/TPI-INDECOPI, which stated that the registration of a trademark should be maintained for the gender of products or services covered, when use of at least one product of service was proven, even if it was not listed in the scope of coverage.
Therefore, Resolution No. 2076-2016/TPI-INDECOPI was issued stating that the following must be evidenced in cancellation actions where the use of the trademark is proven for a product or service that is not specifically included in the coverage:
- If the product or service is included within a gender of products or services expressly distinguished by the trademark.
- If the product or service is similar to other products or services included within the gender.