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Barreda Moller writes...

Cancellation of well-known signs

Although Decision 486 recognizes a special protection for well-known signs, said rule does not include a specific provision regarding cancellation actions based on non-use of well-known trademarks.

In this regard, the Administrative Court has issued a decision (Decision N° 2945-2013/TPI-INDECOPI) which establishes the criteria to be taken into consideration when the cancellation of a well-known trademark is requested.

The Administrative Court has concluded that it is contrary to the rules to cancel a well-known trademark, “this because besides being unfair that someone takes advantage of someone else’s effort, since well-known trademarks do not have to be necessarily registered, the cancellation of a well-known trademark could not generate any preferential right of registration in favor of the one who obtains the cancellation, so said action would lack sense.”

It is worth mentioning that the foregoing criterion finds support in the interpretation of the Court of Justice of the Andean Community, which stated: “although Decision 486 does not expressly establish the inadmissibility of cancellation based on non-use of the well-known trademark, this can be deduced from the rules that regulate well-known signs, as well as from the very principles and postulates that inspire the trademark law.” (Proceedings No. 180-IP-2006)

The Andean Court goes into detail by stating that “(…) although the constant use is one of the ways on which said category can be based (well-known character of a trademark), it is not the only one, since it is not less true that in relation to certain trademarks the degree of well-known character thereof remains in the market although said trademark is not used.” (Proceedings No. 125-IP-2007)

Moreover, the Andean Court states that the protection of well-known trademarks against cancellation actions based on non-use is implicitly recognized by Article 229, paragraph b) of Decision 486, since said article “establishes that the well-known character of a sign will not be denied by the mere fact that it has not been used or is not being used to distinguish products or services, or to identify activities or establishments in the Member Country.” (Proceedings No. 133-IP-2006)

Likewise, both courts have stated that, if the cancellation of a well-known trademark is requested, it must be first evaluated, and within the same cancellation proceeding, whether the trademark which cancellation is sought has or has not the status of well-known sign, the evaluation being performed in accordance with Decision 486.

Now then, if the well-known character of the objected trademark is demonstrated, the Administrative Court has stated that said recognition does not determine “ipso facto” that the cancellation proceeding must be considered as concluded; on the contrary, it must be previously determined if the well-known character recognized refers to the trademark as it has been registered or if the well-known status has been recognized for a sign different to the one that is registered.

The foregoing is due to the fact that “the concept of cancellation of a trademark has as purpose to reflect as precisely as possible the reality of the use of the trademark in the registration that supports it” (Decision No. 2945-2013/TPI-INDECOPI).

In conclusion, we can note that the cited pronouncements are in compliance with the nature of the trademark law with regard to well-known signs, which are protected against any attempt of undue use; thus, the cancellation based on non-use of a well-known trademark is senseless since, as established by the Administrative Court “(…) besides being unfair (…) since well-known trademarks do not have to be necessarily registered, the cancellation of a well-known trademark could not generate any preferential right of registration in favor of the one who obtains the cancellation, so said action would lack sense.”

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