Cancellation of a Trademark Registration for Non-Use

By Edy Guadalupe Portal

 As of January 21, 2011, Salvadoran Mercantile Courts have the jurisdiction to admit cancellation actions for non-use of trademarks. Legislative Decree 913, which reformed Salvadoran Trademark Law in many respects and which became effective on January 21, 2006, authorizes cancellation actions against registrations that have passed their fifth year anniversary of issuance if the marks covered by the registration have not been used.

However, if use begins after five years from registration date, such use will prevent the cancellation of the trademark registration, only if the use begins at least three months before the cancellation action was filed. Consistent with practice in many other countries, this new procedure is to reduce the number of existing trademark registrations in the country and to prevent registered trademarks that are not being used and may never be used, from being obstacles to the registration of new marks that are going to be used in the country. The five year term cannot be interrupted by a renewal or assignment of the registration.

Use can be proven in response to a cancellation action when: 1) Products or services associated with the registered trademark have been in commerce and are available in the quantities appropriate to the size of the market for them, the nature of the products and services and the modalities under which commercialization takes place; or 2) Products or services associated with the registered trademark are produced for exportation. The trademark must be used by its owner or a licensee of its owner in a manner consistent with how it was registered.

The use therefore can only differ with respect to details or elements that are not essential. Accepted evidence of that use can be invoices, accounting documents, and advertisement materials of any kind. Cancellation of a trademark registration under the new procedure can be total or partial (one or several products or services) and of course the challenger to a registration must have a legitimate interest in the outcome of the proceeding. A great number of cancellation actions are expected for 2011.