Terms for cancellation actions for non-use clarified

The Paraguayan Supreme Court of Justice has confirmed that, in accordance with the date of implementation of Paraguayan Trademark Law 1294/98, October 1 2003 is the start date from which to calculate the five-year non-use period required to initiate a trademark cancellation action (Decision 1830, December 22 2004).

Article 27 of the Trademark Law states that "use of a trademark is mandatory, and the lack of said use enables third parties to request the cancellation of a trademark registration that has not been used during a consecutive five-year term counted from its registration" (see New use requirement may spur cancellation actions).

Article 25 of Decree 22365/98, which was issued by the government to regulate Law 1294/98, states that "the five-year term foreseen by Article 27 of Trademark Law 1294/98 for trademarks granted under the former law will be counted as from the date the new law comes into force".

In the course of a trademark cancellation proceeding, the party seeking cancellation filed an action before the Supreme Court of Justice, claiming that Article 25 of Decree 22365/98 was unconstitutional. It argued that the government is not allowed to issue interpretations of the law since that power is not among the powers of the executive branch.

The Constitutional Room of the Supreme Court of Justice dismissed the claim. It stated that the Paraguayan Constitution not only grants the government power of "issuing decrees to regulate the law, but [also] to be part of their elaboration, promulgation and publication". Likewise, Article 137 of the Trademark Law states that "the executive branch shall govern this law". Lastly, Article 120 provides that "the Direction of the Industrial Property Office, [the body competent to handle administrative trademark matters], shall be [governed] by this law and the regulations issued by the executive branch".

Accordingly, the Supreme Court held that Article 25 of Decree 22365/98 does not breach the constitutional precept of separation of powers.

This decision clearly determines that October 1 2003 is the date from which to calculate the period of non-use of a mark required to initiate a cancellation action, no matter whether the trademark was granted under the previous or current trademark law.

Irene Angulo, Berkemeyer Attorneys & Counselors, Asuncion