Legal Relevance of Trademark Registration and Use

Jan 4, 2016 | English Blog

Over the years, trademark registration processes have increased in Nicaragua, as a result of different international conventions and treaties which collaborate to properly understand trademark registration process and use matter; besides, Law N° 380 “Law on Trademark and Other Distinctive Signs”, its regulation and the Intellectual Property Registry, consolidates the bases for a better legal protection for businessmen and consumers IP ́ s related matters, providing them not only with legal protection, but also with the confidence to compete and offer their goods and services on the market.

First, it is necessary to understand what a trademark is, accord- ing to Law N° 380, a trademark is “any distinctive sign capable of distinguishing goods or services”, which can be words, group of words, letters, numbers, slogan phrases, monograms, figures, portraits, labels, badges, prints, cartoons, lines and stripes, and combinations and arrangements of colors, sounds and other perceptible signs. In other words, a trademark is characterized by a symbol or mixture of symbols, applied to goods or services in order to differentiate them from other similar goods or services belonging to different people.

Secondly, it is essential to understand the relevance of a trade- mark and the benefits obtained by its use.

A trademark is a significant instrument not only to be able to distinguish goods and services in the market but also to provide legal protection to its Title holder, in order to avoid that a third party use it without his or her consent; furthermore, it serves as an instrument for quality control on companies ́ production, and as a guarantee to the consumers. From the above, we can conclude that a trademark has three dimensions: the first, It is required to obtain transparency in the market, second, it represents a tool that allows them to differentiate and choose from a variety of goods and services in the market, and third, for businessmen a trademark is a means that makes advertising and attracting a strong customer base possible.

The Intellectual Property Registry, Law N° 380, its regulation and the different specialized agen- cies on this matter, such as the World Intellectual Property Organization (WIPO), encourage trade- mark use, demanding the mandatory use of it, otherwise, there are legal consequences as its cancellation. A trademark should be used effectively in the market, ensuring its renewal. In Nica- ragua, mandatory use of the mark it is not a requirement to its renewal, but lack of use can lead to the cancellation of the trademark. The renewal in Nicaragua, is carried out every 10 years before its maturity, avoiding unused trademarks.

Law N° 380, article 37, defined the use of a trademark as “when goods or services which it distinguish have been placed on the market or are available under the same trademark, consider- ing the market area, nature of goods/ services and the modalities in which the marketing is car- ried out.”

This use is considered made by a licensee or by an authorized person, and shall be construed as performed by the Title holder. A trademark must be used in trade as it appears in the applica- tion and further certificate of registration, it being used differently than the way it was registered is not a cause for cancellation only if those differences are details that do not alter its essence. This measure prevents that a trademark is registered in one way and used in another.

Furthermore, the use of a trademark without having been previously registered, can be grounds to successfully oppose against another trademark that has been applied for by another party. It may even result in the cancellation of one trademark that is already registered. Law N°390, pro- vides that the non-use of a trademark, according to Article 36 to 39, and 40 of its regulations, the competent judicial authority may cancel the registration of a trademark, if it has not been used for three consecutive years, preceding the cancellation action. In this case, the burden of proof corresponds to the title holder.

In conclusion, a trademark registration and use means a way to acquire exclusive ‘right of it, moreover, keep its renewal conditions alive, as we know it for 10 years. Businessmen seek protection by the effective use of it, and secondly, it opens a way to a fair commercialization market. Trademark’s cancellation is a tool to prevent the registration of trademarks that are not used and facilitates the registration of new ones.