PTO adopts controversial interpretation in cancellation proceedings

In TM Americanino v Americanino, the Bolivian Patent and Trademark Office (PTO) has issued a new interpretation concerning the period of time for which use must be shown to avert the cancellation of a mark. This new stance departs from the previous line of jurisprudence and, on its face, seems to run afoul of the text of the law.

Article 165 of Andean Community Decision 486 on a Common Industrial Property Regime provides that, in order to successfully defend against a cancellation petition, a defendant must prove the “continuous use [of its mark] during the three consecutive years” preceding the commencement of the cancellation action. 

In the present case, the cancellation petition was filed by the plaintiff on August 9 2007. Therefore, following the previous line of jurisprudence and the text of the law, the defendant needed to show actual use of its mark for 2004, 2005 and 2006. This is precisely what the defendant did but, surprisingly, the PTO issued two judgments (the first-instance judgment and a decision on appeal) holding that the defendant had not shown use for the “past three consecutive years”. This was due to the fact that, for reasons not attributable to the parties, the claim was actually served on the defendant on November 7 2012 - that is, about five years after the action was filed. The PTO thus determined that the “past three consecutive years” were 2009, 2010 and 2011, and that use should have been shown for that period, rather than for 2004, 2005 and 2006.

Effectively, through Decisions 187/2013 and 214/2013, the PTO adopted a new position which implies that a process will be deemed to start with the service of the claim, and not with the filing of the claim or with the decree that admits the claim, as had been the standard view.

Not only do these decisions represent a sudden change of course, but they also deprive defendants of their right to defence because the code of administrative procedure stipulates that no new evidence will be admitted beyond the statutory evidentiary period, unless such evidence has been recently obtained. The defendant in this case had submitted evidence of use for 2004, 2005 and 2006, but had also always possessed evidence of use for 2009, 2010 and 2011 that had not been filed in the process; however, such evidence could not be filed and be considered 'new'. Therefore, evidence of use for 2009, 2010 and 2011 was inadmissible and, as a result of Decisions 187/2013 and 214/2013, the defendant's mark was cancelled even though the defendant could have provided evidence of use for any period of time.

Beyond the fact that the discretionary interpretation of the PTO in this matter and others is tantamount to judicial and legal insecurity, all that remains now is the uncertainty created by Decisions 187/2013 and 214/2013. Does this new interpretation on the period of use represent a definite change of course in the resolution of cancellation actions, or is it only the opinion of a lower instance? Litigants (and in particular the owner of the mark AMERICANINO) are today left in the dark regarding what actually constitutes “the past three consecutive years”. 

This matter can only be settled in one of three ways: 

1. A final administrative appeal decision in the present case could conceivably vacate the lower instance decisions on nullity grounds for departing from the provisions of Article 165 and remand the case to the lower instance, which would mean that a new evidentiary period could reopen due to the nullity of the entire process;
2. In a future similar case, a defendant could decide to appeal a similar decision all the way to the Supreme Court; or
3. In a future similar case, a defendant could file a compulsory query with the Andean Court of Justice in order to obtain a binding opinion. 

Only the vacating of the lower instance decisions or a specific pronouncement by a higher court could resolve this issue. In the meantime, trademark owners seeking to defend their marks against cancellation actions would be well advised to file evidence of use for as many years as possible.

Juan Ignacio Zapata, Bolet & Terrero, La Paz