Partial cancellations not possible until December

In Van Cleef & Arpels SA v Zanzi SA (01ç323 AC), Ecuador's Intellectual Property Committee has confirmed that a suit for partial cancellation of a mark may not be brought until at least December 1 2003 - three years after Andean Community Decision 486 on a Common Intellectual Property Regime came into force.

Relying on Decision 486, Van Cleef requested the partial cancellation of Zanzi's 1997 trademark registration of ZANZIBAR, which protects all products in Class 29 of the Nice Classification (ie, meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams and compotes; eggs, milk and milk products; edible oils and fats). Decision 486, which came into force on December 1 2000, provides that a mark may be partially cancelled if the owner cannot prove effective use of the mark for all the products or services covered by the registration in at least one member state during the three consecutive years prior to the filing of the cancellation action. (The member states of the Andean Community are Bolivia, Colombia, Ecuador, Peru and Venezuela.)

The Intellectual Property Committee held that Decision 486 cannot be applied retroactively. Therefore, as the decision did not come into force until December 1 2000, actions for partial cancellation may not be brought until December 1 2003 (or three years after a mark has been registered, if registered after December 1 2000).

Bruce Horowitz, Paz & Horowitz, Quito