What happens if I misuse my trademark?

Apr 6, 2022 | English Blog

Posted by: Francisco Alvarado | Senior Associate at Alvarado y Asociados.

If you have a trademark, either registered, or in use at a national level but not yet registered, you should know that you are exposed to certain mechanisms that may be carried out ex officio or at the request of third parties that may result in the cancellation of the registration of your trademark and that someone else can appropriate your brand.

The causes for termination are several and it is important to know each one of them. Our legislation on Intellectual Property, specifically our Law on Trademarks and Other Distinctive Signs (Law No. 380) contemplates the actions of Nullity, Cancellation and Resignation, the first two are legal actions that can be exercised mainly by a third party interested in the nullity or cancellation of the registration of a trademark, the third is a petition that can be presented before the Registry of Intellectual Property by the owner himself for the cancellation of his registration.

Regarding the cancellation, you should know that the two causals contained in the Law closely related to its use. The first is the cancellation by generalization of the trademark, an action that can be filed by any interested person and the competent judicial authority will cancel the trademark registration or limit its scope when the owner of the trademark has caused or tolerated that said trademark becomes a common or generic sign to identify or designate one or several products or services for which the trademark has been registered, and the second is the cancellation action for lack of use, which is the one that can be filed by any interested person when the trademark has not been in use during the three continuous years preceding the date on which the cancellation action is initiated. The judicial sentence that declares the cancellation of the trademark registration due to lack of use must be made after hearing the holder of the registration of the mark affected by the action, and in this case, it is the Holder of the registration of the mark who has the burden of proof of use of the brand, in accordance with what is established by our legislation.

With the above, you must keep in mind that your brand will always be vulnerable, so first of all if you use a brand without having a registration, there is no better decision than to carry out the necessary procedures to obtain the registration of your brand, which will give you an exclusive right of use and finally make constant use of it, having a presence in the market, in the quantity and form that normally corresponds to the size of the market, the nature of the products or services in question and the modalities of their commercialization, and the modalities of its commercialization in any of the member countries of the World Trade Organization (WTO). Even the use of a trademark by a licensee or other authorized person benefits the owner of the trademark, which is a useful tool for foreign trademark owners who wish to maintain a trademark in Nicaragua.


For additional information please contact Francisco Jose Alvarado at Alvarado y Asociados at falvarado@alvaradoyasociadoslegal.com