Cancelling marks for non-use becomes harder
The Administrative Court of Peru has issued the following guidelines regarding the cancellation of trademarks based on non-use:
- The trademark owner must prove that it "sufficiently used" the mark at any time during the three years prior to the commencement of the cancellation action. Sufficient use during either the first or last three months of this three-year period will be enough to avoid cancellation.
- When proving registration and use of a mark in an Andean Community member state other than Peru, it is no longer necessary to satisfy diplomatic and consular legalization requirements for documents executed in that member state. If the party bringing the action for cancellation objects to such a document (sometimes called an 'apostille'), it has the burden of proving that the document is not legitimate.
- Although documents showing that marked goods have been exported from an Andean Community member state to a non-member state will be accepted as proof of use, documents showing that marked goods have been imported from a non-member state to an Andean Community member state will not.
- Documents that make reference to the challenged mark but not the goods to which the mark applies will not be accepted as evidence of use on their own. They must be supported by catalogues, brochures or other literature evidencing that the mark has been used on the goods for which it was registered.
José Barreda, Barreda Moller, Lima
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