Use for any length of time sufficient to defeat cancellation action

The Colombian Trademark Office (TO) has issued a resolution affirming that where a mark is subject to a cancellation action, suitable evidence of use of the mark during the three years preceding the filing of the cancellation action will cause the action to fail (Resolution 04870). Such evidence must comply with the requirements of Colombian law, which provides that a trademark is in use when the goods or services distinguished by it have been placed on the market in the form and amounts that are normal for the market, taking into account the nature of the goods or services, and the marketing methods used.

Article 165 of Andean Community Decision 486 on a Common Intellectual Property Regime provides that a trademark registration will be cancelled on the grounds of non-use if it has not been used by its owner or an authorized third party for an uninterrupted period of three years immediately prior to the date on which the cancellation action is filed.

Pursuant to this legislation, Doctor's Associates Inc applied to cancel the trademark SUBWAY, which had been registered for services in Class 42 of the Nice Classification, on the grounds of non-use. In response, the defendant - Leo Eisenband - contended that he had started using the mark 21 days prior to the action for cancellation. However, there was some uncertainty as to whether a use for such a limited amount of time constituted 'use' for the purposes of Section 165.

The TO stated that the use of the trademark for 21 days was sufficient and interrupted the three-year term noted in Article 165. Thus, it held that the cancellation action must fail.

Ramiro Castro, Brigard & Castro, Bogota