Posted by: Zayda Cubas | Junior Partner at Alvarado y Asociados.
There are those individuals or legal entities, who start the process of trademark registration in Nicaragua even when they have no short-term plans for the use of it, either because they are studying the possibility of introducing their products, provide their services in the domestic market or because the introduction of its products involves obtaining prior additional permits in addition to the obtaining of the corresponding trademark, such is the case of pharmaceutical products that require obtaining a sanitary registration in order to be able to market these products in the country and therefore, during this process, the mark cannot be used. The companies interested in protecting the brand initially proceed with the formalities for trademark registration in order to ensure the right to exclusive use. This process is sufficient if the aim is the sole protection of the trademark in the country, however, there is something extra to be considered: The use of the Trademark itself.
Although the use of the trademark is not a requirement for registration, the use of the trademark becomes relevant when considering the validity of the registration itself. Even though, our national law does not require companies to demonstrate the use of trademark to maintain the validity of a registration, it is possible for a trademark registration to be terminated by canceling it due lack of use.
It is very important to be aware of this fact, since the owner of a trademark registration might think that since prior use of the mark is not required to proceed to its registration, and being that it is not required to prove use of a trademark to maintain its validity for the ten years term, then there is no risk involved by not using it. That is not the case, since there is a possibility that the registration might get cancelled for non- use by an action filed by a third party.
Another aspect to consider is that under our current legislation, natural or legal persons who use a non-registered brand in good faith inside the country, have the right to object to the appropriate authorities. Among the causes grounds of inadmissibility based on third party rights it is indicated: “a sign cannot be registered as a mark when its use will affect a third-party prior right. It is understood as affecting a prior right of a third party in any of the following cases: that the sign applied for is identical or similar to a sign that has been used in good faith in the country by a third party to identify the same products or services.
Thus, an individual with an unregistered trademark may, if it meets certain requirements, oppose against a trademark that is similar or identical to theirs. Finally, the use of brand should be a priority for those who do not want to risk losing their registration due to a cancellation action based on lack of use. For those who use the brand without registration, it is wiser to proceed with the paperwork to ensure a right of exclusive use.
For additional information please contact Zayda Elizabeth Cubas at Alvarado y Asociados at firstname.lastname@example.org