Use Your Marks

by German Marin Ruales

In Colombia the exclusive right to use the marks is obtained only by registration. The use of the mark made before registration does not confer any rights.  Once registered, Colombian law provides a grace period of three years from the notification of the granting of registration to start using the mark. After the expiration of the previous period of time the mark will be exposed to the actions of cancellation for lack of use which not only imply the loss of the registration, but can also grant a "preferential right" to the actor of the cancellation action to obtain the registration of the cancelled mark.

In order to avoid the cancellation of the trademark it is necessary to use the mark in Colombia or in any of the member countries of the Andean Community of Nations (CAN), namely Bolivia, Ecuador, Peru, Colombia.  It is always convenient to keep record of the evidence of use for the event that a cancellation action for lack of use would be instituted, since the owner of the mark against whom the cancellation action is instituted has the burden of the proof and must therefore demonstrate use.

The only exceptions to have to prove the use are fortuitous event and force majeure, cases that are of difficult occurrence in Industrial Property matters.  An example would be the failure to obtain health registration for a product that requires the same to be commercialized.

Likewise, the Trademark Office (Superintendence of Industry and Trade) has recently accepted the argument that the cancellation of a trademark for lack of use can be avoided for a trademark registered in Colombia but yet not used if the owner proves that it is a notorious trademark and that Colombian consumers have knowledge of the same, although it is actually not being used, as was the case with Walt Mart.

It is important to highlight that the use made of the mark must be an "effective use" made in any of the Andean Community member countries as already noted. The "effective use" means that the products or services that the mark distinguishes "have been placed in the market or are available on the market under that mark in the amount and mode that are normal, given the nature of the products or services and the terms under which their marketing takes place in the market "(Article 166 Decision 486 CAN). Thus, "effective use" varies depending on the type of goods or services distinguished by the mark.

Since the requirement is for the effective use of the mark, the mere advertising or intended use will not be accepted as evidence of use.

The mark must be used by its owner, his licensee any other authorized person who is duly accredited to the Trademark Office.

It is desirable that the use made covers all products or services that are distinguished by the registration of the mark, since the Trademark Office may make partial cancellations. This is that the Trademark Office may cancel only one or more of the goods or services for which use cannot be proven.

"The use of the mark may be proved by commercial invoices, accounting documents or audit certificates that show the regularity and amount of the commercialization of goods identified with the mark, among others" (Article 167 Decision 486 CAN).

It will be convenient that those documents are on file at least a year before the date of application for cancellation in order to prove the regularity and extent of marketing.

"Other" means that may be accepted as evidence of use refer to those permitted by the law of the member country in which the  cancellation action is filed.

Our recommendations are: i) Review the portfolio of trademarks to identify marks that are vulnerable to be cancelled for lack of use. ii) Once identified such marks, determine the viability of use or licensing and iii) If you cannot use nor license, new registrations should be obtained (with some change, added color or element that would avoid rejection of the new registration for lack of object since the vulnerable mark still appears in force, and obviously that it eventually will be used that way) in order to be sure of not being exposed to cancellation for lack of use.

Note that cancellation actions for lack of use can only be instituted at the request of an interested party, and that the Trademark Office cannot officially institute a cancellation action for lack of use.

It is a clear fact that the marks are registered to be used and enhance the options of trade. Notwithstanding the importance of using the mark, however for the purposes of trademark renewals in Colombia the law does not require proof of use to renew the trademarks.