Posted by: Zayda Cubas | Junior Partner at Alvarado y Asociados.
The termination of applicable rights over a registered trademark is a very important topic that should be known by all trademark owners, since the causes for termination are many and it is important to know about each of them. Our Intellectual Property Legislation, specifically, the Trademark Law and other Distinctive Signs (Law 380), which regulates the nullity and cancellation actions as well as the renounce of a trademark. The first two are judicial actions that can be exercised primarily by an interested third party in the nullity or cancellation of a registered trademark, and the third one, is a petition that can be filed before the Intellectual Property Registry by the owner of the trademark to obtain the cancellation of its registration.
Applicable Intellectual Property legislation establishes that the corresponding judicial authority will declare the nullity of a Trademark registration, if the same has been issued in violation of the specific prohibitions provided for the registration of Trademark, reflected in articles 7 and 8 of the Law of Trademarks and other Distinctive signs, and correspond to inadmissible trademarks for intrinsic reasons and for third parties rights. The judicial ruling declaring the nullity of a trademark, should take place prior to the notification and hearing of the trademark ´s owner, and in the event that such causes for nullity affect only certain products or services covered by such registered trademark, then the nullity will be declared only in regards to such products or services, depending upon the specific case, limiting the lists of protected goods or services, and eliminating the goods or services subjected to such nullity.
In the case of cancellation action, the applicable law establishes two causes for cancellation: cancellation of registration for generalization of the mark and for non-use of the mark. Any interested person can file cancellation action of a trademark registration for generalization of the mark, and the corresponding judicial authority shall cancel the registration of a trademark or limit its scope where its owner has caused or allowed it to become a common or generic sign to identify or designate one or more of the products or services for which it was registered. Any interested person can file a cancellation action of a registered mark, alleging non-use of the mark when the trademark had not been used during the three consecutive years preceding the date of filing of the cancellation action. However, this judicial action shall not proceed before three years from the date of initial registration of the mark in the country. The judicial ruling declaring cancelation of registration for lack of use of the trademark, should take place prior notification and hearing of the trademark´s owner, and in this kind of action the trademark´s owner has the burden of proof of use, according with the establish in the applicable legislation.
Lastly, the resignation or renounce is an application that should be made by the trademark registration´s owner requesting the cancellation of the corresponding registration. This application is filed before the Intellectual Property Registry and in the event of a lien or other rights in favor of a third party, the Resignation is only allowed with written consent of the third party certified by a notary.
It is important to mention that another cause of termination of the registration of a trademark, is due to the expiration of term granted when registered (10 years), or of the corresponding renewal period if this trademark is not renewed as required by law between the corresponding renewal period for an additional term of ten years.
For additional information please contact Zayda Elizabeth Cubas, at Alvarado y Asociados at email@example.com