Partial non-use cancellation actions now available
The Trademark Office has announced that it is now possible to file partial non-use cancellation actions in Peru pursuant to provisions of the Andean Community Decision 486 on a Common Intellectual Property Regime. Partial non-use cancellation actions can now be filed in all Andean Community countries.
The relevant provisions of Decision 486, which came into effect on December 1 2000, state that the specification set out in a trademark registration application can no longer include the general phrase "and all other goods and/or services in the class". Applications must specifically indicate the goods and/or services of interest under the class headings of the Nice Classification.
Decision 486 also makes provision for partial non-use cancellation actions and this practice has now been approved by the Trademark Office. If a registrant is unable to show use of a mark in connection with certain goods or services covered by the registration, such goods or services will be removed from the registration. Thus, the registrant will only maintain rights in connection with the goods and/or services upon which actual use in commerce is shown.
Although the Trademark Office has announced that partial non-use actions can now be filed, it has yet to comment officially on how the final section of Article 165 of Decision 486 will be interpreted. This provision states that: "For the purpose [of partial non-use cancellation actions], the identity or similarity of the products or services will be taken into account". This provision leads to a number of possible conclusions, including the following:
- If the list of goods includes a general description - such as dairy products - use of the mark in respect of one type of dairy product, for example yogurt, could allow the registrant to remain within the specification of dairy products.
- If the list of goods cited in the registration is for specific goods, such as "yogurt, cheeses, milk and butter" but the mark is used only to distinguish butter, the remaining goods may not necessarily be eliminated from the registration because they are similar to the goods for which the mark is used.
- If the registration covers a particular class heading but the mark is used only in connection with one type of product or service corresponding to that class, all the goods or services cited in the registration will be eliminated except for those descriptions that specifically cover the products or services for which the mark is used.
The inclusion of partial non-use cancellation actions into Andean Community trademark practice means that mark owners will have to develop strategies to defend their marks against attack. Peru does not allow registration of marks that are identical to prior registered marks covering the same goods and/or services. One option for registrants, therefore, is to file a new trademark application in a form different to the mark as registered (eg, different script, use of a special font character or a link to a label) covering the goods or services of interest or the class heading. A second option would be to voluntarily cancel in part any existing registration, maintaining rights only in those goods for which the mark is used. The same mark could then be re-filed under the class heading, excluding the goods covered by the original registration. Other options may be possible.
The Trademark Office will have to determine whether the petitioner in a partial non-use cancellation action can exercise preferential rights for registration of a trademark partially cancelled for the same goods and/or services expunged from the registration, or whether the petitioner will be required to narrow the specification of goods and/or services. It is likely that the Trademark Office will issue guidance on this matter in the near future.
José Barreda, Barreda Moller, Lima
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