New use requirement may spur cancellation actions

Paraguay's Trademark Law 1294/98 makes the use of registered trademarks mandatory. It provides that as of October 1 2003 actions may be brought for the cancellation of marks that have not been used for five consecutive years.

The law's use requirement provides that use must be bona fide and substantial, taking into consideration the nature of the product, the marketing practices for that product and the size of the market. It also provides the following:

• A pre-launch advertising campaign will be considered use of a mark so long as the marked product is put on the market within four months of the beginning of the campaign.
  
  
• The use of a mark in any of a number of classes for which the mark is registered will be considered use in all the classes.
  
  
• The use of a mark in another country will be considered use of the mark for the purposes of the Paraguayan law. (The MERCOSUR Protocol for Harmonization of Norms Regarding Intellectual Property also provides that use of a mark in any of the member countries will fulfill the use requirement in all other member countries. However, only Paraguay and Uruguay have so far ratified the protocol.)
  
  
• Evidence of the recording of a licence agreement alone is not sufficient to prove the use of a trademark. However, evidence that the licensee has used the mark will fulfill the use requirement if the licence has been properly recorded.

The law's cancellation provisions state that in a cancellation action for non-use, the trademark owner has the burden of proving bona fide and substantial use. If the mark owner has not used the mark and this non-use is because of an act of force majeure, the cancellation action will be rejected.

The law also provides that cancellation actions for non-use shall be filed before the civil courts of first instance and will follow the regular civil procedure. If a cancellation action is initiated as a counterclaim in an opposition proceeding, the opposition will follow its normal course before the Litigation Section at the Trademark Office. When the Trademark Office is ready to issue its decision, the opposition procedure will be suspended until the civil court issues a final resolution in the cancellation action.

Adriana Casati, Berkemeyer Attorneys & Counselors, Asuncion