Francisco Espinosa Reboa, speaker at INTA Annual Meeting

By Francisco Espinosa Reboa

Francisco Espinosa Reboa, Managing Partner of Espinosa Bellido Abogados, was one of the speakers at the 139º Annual Meeting of the International Trademark Association (INTA), which took place from May 20 to 24 in Barcelona. Along with two colleagues from Brazil and Mexico, Espinosa Reboa was part of the annual Regional Update on Latin America, an intermediate to advanced level session that this year discussed the "Impact of Absence of Local Use in Trademark Protection".

The session explained case law, relevant decisions and existing regulations concerning acceptable use, foreign use and lack of local use in trademark opposition and cancellation cases in the most important markets of Latin America: Brazil, Mexico and the Andean Community, a customs union comprising Bolivia, Colombia, Ecuador, and Peru.

To start, Espinosa Reboa clarified that although the Andean Community has common supranational Intellectual Property regulations, its members countries have their own national IP regulations that may vary depending on the country. Nevertheless, he advised trademark owners that in all Andean Community countries they should use their trademarks for the exact goods and services for which they were registered, therefore avoiding problems when a third party asks for cancellation due to lack of use.

In the Andean Community, three years after a trademark is registered a third party can request its cancellation due to its lack of use. On this hypothetical scenario, the use of a trademark must be demonstrated in at least one of the four member countries of the Andean Community and for at least one of the products or services for which it was registered. Espinosa Reboa explained that in the Andean Community the needed evidence in a case of cancellation due to lack of use are mainly invoices that demonstrate the commercialization of the product or service for which the trademark was registered. In those products and services where the use is not demonstrated, the trademark will be effectively canceled.